Chamber of Commerce Recommendations to Incoming Admin on USPTO
By Lawrence B. Ebert, Esq.
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a href="http://www.govexec.com/story_page.cfm?articleid=41671dcn=todaysnews"GovernmentExecutive wrote of the Chamber of Commerce report/a on the USPTO:br /br /iThe Patent and Trademark Office is "an agency in crisis" that will face significant challenges in the Obama administration due to a 750,000-application backlog and other internal inefficiencies, a report by the U.S. Chamber of Commerce warned Friday [Dec. 19}./ibr /br /Of the proposal of deferred examination:br /br /iHowever, the report notes that such a system could bcreate additional uncertainty /bbecause rivals would wait longer before deciding whether they could safely market new products.It might also be unfair to shift to competitors, as some deferred programs do, the burden to pay for and initiate a proceeding for someone else's application. Furthermore, the proposal could increase patent lawsuits because parties who have invested in new products may be more willing to litigate, the report states./ibr /br /a href="http://www.eetimes.com/news/design/showArticle.jhtml?articleID=212501438"Rick Merritt of EETimes/a wrote: iThe report notes that from 1988 to 2008 the backlog at the patent office has grown from 268,000 to 750,000 applications. Waiting time for action on an application has stretched from 20 to 32 months over the same period.br /br /Meanwhile, the patent office now employs more than 9,000 people, many of them with less than five years experience examining patents. From 2002 through 2006 the office lost one examiner for every new hire, the report said./ibr /br /a href="http://www.theglobalipcenter.com/NR/rdonlyres/e5txnmjhsn5mjbtvtazna33y3dimpz5cuxtgjeix4wix3dqpiy5domrryniqsbo6rr7xbe64tcijitq6hxnlts7u3xb/USPTOPatentProjectFINAL.pdf"The Chamber report is available/a.br /br /Note the report discusses qualifications of the Director:br /br /iThe PTO cannot achieve organizational excellence without the strong leadership and executive management br /capabilities of the incoming under secretary and director. Accordingly, that individual must be an experienced, br /highly respected leader in whom the Congress and the intellectual property, business, and international br /communities can place their full con? dence. br /Equally important, the appointment of a top-caliber, knowledgeable intellectual property executive offers the br /potential to reinvigorate the public/private partnership that has worked well in the past. /ibr /br /Continuing applications were discussed:br /br /iRCE ? lings have increased from 8.3% of total ? lings in 1998 to 19.6% in 2007. This increase br /contributes to the backlog of applications to be examined at the PTO and the increase in average time br /of pendency. Reducing the need to ?le RCEs would have a positive impact on PTO backlogs and reduce br /prosecution costs. br /The PTO should analyze the cause of this increase in RCE ?lings from both an internal br /and external perspective. Internally, the PTO should consider altering the current examiner br /incentives to seek additional production credits by extending prosecution through RCE ?lings br /and encourage early resolution of patentability issues, including credit for prosecution after br /?nal rejection. Externally, the PTO should consider addressing current applicant practices br /that lead to extended prosecution and increased RCE ? lings. br /Continuation Practice br /PTO should consider whether it would be desirable to limit the time period for presenting broadened br /claims in continuation applications so that the public would have increased certainty in understanding br /the scope of patent protection ultimately granted to a patent family. /ibr /br /One of the major flaws in Lemley's "Ending Abuse..." was the failure to recognize that the prime driverbr /for continuing applications was things rectifiable by RCEs, rather than by continuations. The filing of many RCEsbr /indicates flaws in examination, not attempts to "after-cover" products of competitors. Lemley got it wrong.
