just_n_examiner (just_n_examiner) wrote,

USPTO Director's Blog

Newly sworn-in Director of the USPTO, David Kappos, has started a blog.

I'd link to it, but for the time being, it's hosted on the internal USPTO servers, available only to employees of the Office. However, according to the announcement, "we plan to make the blog available to the public in the coming weeks."

In his first post, Kappos says all the right things, and endorses as "achievable" the rather audacious goal set by Secretary of Commerce Gary Locke, of reducing first action pendency to -- 10 months.

You read that right -- 10 months.

Needless to say, I'm somewhat skeptical. It's an awfully ambitious goal. I can't even imagine when the last time first action pendency was at 10 months.

Some of the Director's post:

"I do think this is an achievable goal, and that we can reduce first action pendency even while further improving quality. One key is to expeditiously identify and resolve issues of patentability - that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.

On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality. Let's be clear: patent quality does not equal rejection. Patent quality equals granting those claims the applicant is entitled to under our laws. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently - what we all know as compact prosecution.

When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. In fact, in an ideal world, 100 percent of applications would be allowed because applicants and USPTO examiners would be working from exactly the same mindset, and applicants would submit applications meeting all requirements in the first instance. Of course, we'll probably never see such an ideal world. But by engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection."

As I said, this all sounds good, but I was especially struck by the 10 month first action pendency goal.

Kappos has spoken about reforming the production system in some of his public statements. Most of the talk I've heard about this, both within and outside the Office, seems to reflect the belief that the production system is flawed, but can be tweaked to make it more workable.

I don't share this viewpoint.

If the Office is serious about achieving 10 month pendency, I really think they're going to have to blow up the production system as it is currently constituted.

The production system is set up to make sure that examiners process applications in a timely fashion. The ultimate goal is presumably to manage pendency. But it currently doesn't do that very well, and that's because examiners' incentives are not well aligned with the Office's pendency reduction goals.

So let's consider this question: what actions taken by examiners really contribute to pendency reduction? It would seem pretty obvious that first actions and disposals are the key.

But here's the thing: Not all first actions and disposals help reduce pendency; only first actions to initially commence prosecution and the ultimate disposal through abandonment, allowance, or appeal (an appeal that actually goes to the BPAI) would promote pendency reduction.

The express abandonment that is part of the RCE process, as well as the subsequent first action, do nothing to advance the Office's goal of pendency reduction, at least nothing above what any other non-final or final action contributes (which is but incremental progress towards ultimate disposal). This being the case, the question one might ask is "Why do examiners get counts for them?"

[Continuations under 35 USC 120 I'd think would be treated as separate applications, since theoretically these are different inventions.]

In a radically re-worked production system, one which promotes only the Office's pendency reduction goals, I'd figure that examiners would get big credit for an initial first action, since this is clearly the most important action in the entire prosecution of the application. It needs to be thorough, with the bulk of the relevant prior art uncovered right up front.

Since examiners have some, but certainly not all, of the control over the conduct of prosecution, meaning that a stubborn applicant could certainly choose to hang in there for as long as they wanted (and could afford), I'd think that giving examiners some (very) minimal credit for all of the intervening actions would be fair. After all, they are incrementally moving prosecution forward.

Another big payoff should occur when the application is finally disposed of.

What this should encourage is a thorough search up front and an examiner that is very motivated to bring prosecution to a close as quickly as possible.

Under the current production system, examiners are getting more credit for an RCE than they are for ultimate disposal, because they're getting a disposal count when the RCE is filed, and then a first action count when the next action is prepared.

Lets think about at that again. The current production system gives examiners more credit for an RCE than an ultimate abandonment, allowance, or appeal. How in the world does that promote pendency reduction?

There are certainly lots of things that I'm overlooking. There were presumably reasons for implementing the production system as they did in the 1970's. The examination process was certainly very different back then, though.

Of course, this would only be a starting point. Implementing such a system would be really difficult. Production goals and BD quotas would need to be completely re-worked. Even the schedule for when an examiner got their review might need to be changed, since initial FAOM and ultimate disposals occur much less frequently than counts under the current production system. All kinds of unknown factors (such as the period an examiner spends building their docket, before they are getting any disposals) would need to be analyzed and accounted for.

POPA would hate it. Hell, I'd hate it. If a new production system isn't implemented well initially (and after all, what ever is?), examiners would be sure to suffer the consequences while the Office and POPA worked out the kinks.

But guess what? Tweaking the current system is not likely to achieve the Office's pendency reduction goals. When examiners get more credit for an RCE than an ultimate disposal, that system is simply not going to work.
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