THE STATE OF THE PATENT SYSTEM BACKGROUND FOR RULE PROPOSALS

Los Angeles Intellectual Property Law Association “Washington and the West” Conference January 25, 2006

UPR Applications Filed

FY 05 plan 375,080 (5.5% above FY 04)

FY 05 actual 384,228 (8.1% above FY04)

2.6% over plan

TC Application Inventory

1 “New Application inventory” is the number of new applications designated or assigned to a technology center awaiting a first action. *Total inventory includes applications not assigned to a particular TC, awaiting processing either pre- or post-examination.

Patent Pendency(as of 1/1/2006)

1 “Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005. 2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed application, completed during October-December 2005.

First Action Pendency by Art Areas

1 “Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005.

Inventory by Art Examples

*The number of months it would take to reach a first action on the merits (e.g., an action addressing patentability issues) on a new application filed in July 2005 at today’s production rate. Today’s production rate means that there are no changes in production due to hiring, attrition, changes to examination processing or examination efficiencies, and that applications are taken up in the order of filing in the given art unit/area. Of course, USPTO is taking aggressive steps to ensure changes that will significantly lower the inventory rates in high-inventory art areas.

Quality of Products – FY 05

*Compliance and error rates as measured by OPQA.
¹ Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution).
² Patent allowance error rate is the percent of allowed applications reviewed having at least one claim which is considered unpatentable on a basis for which a court would hold a patent invalid. “Allowance” occurs before a patent is issued, so these errors are caught before any patent is actually granted.

Technology Centers Rework* Statistics

* Rework first actions are those actions that are in a Continuing (CONs and CIPs), RCE, CPA or 129(a) applications (excludes Divisionals).

Continuation Filing Rates

Continuation Filing Percentage

Alternative: Appeal

Appeal Conference Initiatives

• Pre-Brief Appeal Conference Pilot Program
  • 1296 Off. Gaz. Pat. Office 67 (July 12, 2005)
  • The USPTO is extending the program until further notice.
• Appeal Conferee Specialists Pilot Program

Average Number of Claims at Filing

Rule Makings on Representative Claims and Continuing Applications

• Rule Makings on Representative Claims and Continuing Applications
  • Better focused examination – help us get it right the first time
  • Create greater finality in examination:
    • To help the Office turn to new inventions and create public certainty on patent protection

Pendency Reduction Action Plan

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