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Change to 'count' system should help backlog at PTO

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In a small, but significant development, the U.S. Patent & Trademark Office recently changed the way it measures the production of its examiners.

The agency now will give more credit to its employees for starting new applications than it does for reviewing old cases.

"On a broad level, the idea is to get patent applications through the patent office quicker," said Lisa Haile, a San Diego partner with DLA Piper and co-chair of the firm's global life sciences sector. "One of the reasons patent applications were stalling within the office was there may not have been enough incentives for examiners to push applications through more quickly."

The USPTO has a backlog of approximately 770,000 patent applications, according to its Web site. New director David Kappos is trying to alleviate the problem by implementing several initiatives, including revamping the "count" system.

Patent examiners are given a certain amount of points -- or "counts" -- for each case they review as a way to objectively measure productivity.

In the past, every case was worth the same amount, whether it was a first office action or an RCE (request for continued examination). By not differentiating between cases, examiners had no reason to resolve an application early.

"You would have an examiner that would get a few clients that would not give up," said Tom Franklin, a partner in the San Diego office of Townsend and Townsend and Crew, "and the same 50 or 100 cases would be on their docket forever in a merry-go-round where they kept getting points."

The new system will give an examiner two points for the first office action, 1.75 for the second round and 1.5 for an RCE. The new system could reduce an examiner's productivity by 25 percent, Franklin said.

"So what I've found is I have examiners desperate to allow cases because their stable of cases really aren't rendering the output that they used to render," he said.

This isn't the first time the patent office has tried to speed examinations. Haile, a 20-year practitioner, has seen her share of programs, including the agency's experimentation with a set timetable for application reviews.

However, this latest program, Haile said, appears like an attempt to give the examiners not only an incentive to push the cases off their desk but to move them through the system.

San Diego intellectual property attorney Pedro Suarez, a member at Mintz, Levin, Cohn, Ferris Glovsky and Popeo, said the program seems to be working.

"We are already seeing the examiners reaching out to the applicants to try to make prosecution more compact," he said. "When you schedule an interview, the examiners are more attentive and seek to reach a conclusion rather than just kick the ball down the road and let prosecution linger."

Kappos has implemented other changes to go along with the new "count" system as well, including giving examiners credit for initiating informational interviews with applicants.

The patent office also is giving examiners more time to study a case and won't penalize an examiner for making a single, clear error.

"If you are a junior examiner, you were in fear that if you made a single error, you'd get a reprimand," Suarez said. "They have a tough job. If you're in fear, the easiest thing to do is not allow any cases, and that was happening."

By giving examiners more credit for new cases and more time overall, the new PTO director is trying to put more emphasis on the front end of patent prosecutions. When an application is filed, the examiner does his or her research, trying to find the closest prior art.

In the past, the examiner wasn't necessarily motivated to find the best art available during the first office action, knowing they'd get another chance during their second, or final, office action.

San Diego patent attorney Bill Hunter, a principal with Fish & Richardson, said examiners were seemingly encouraged to prolong a prosecution.

But if they get more credit up front and less for RCEs, "it changes the mentality to what the (patent system was) meant for," Hunter said. "Do the best search first and get to a resolution quickly."

After the final office action, typically the second round, you can't submit new evidence without filing an RCE, which costs money.

"It becomes very expensive just to keep the process moving," DLA Piper's Haile said. "Hopefully if you get cases from filing to allowance more efficiently, there should be more cost saving."

And that's good news for everybody.

"With the state of the economy, my clients, regardless if they're large or small, want quicker prosecutions," said Suarez, the Mintz Levin attorney. "It saves them money."

While the local attorneys agree that the current changes will help ease the backlog at the patent office, Fish's Hunter said it could have another effect.

"I know clients who are not filing (patents) because of the delay," he said. "If compact prosecution succeeds, it will encourage people to file more patents."

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