Patent Law

On May 5, 2010, Director Kappos testified to the House Judiciary Committee. The prepared testimony included three specific USPTO goals:

• By the year 2014, reduce the average time to first office action on the merits for patent applications to 10 months;
• By the year 2015, reduce total average pendency for patent applications to 20 months; and
• Create an IT infrastructure that permits end-to end electronic processing in patent and trademark IT systems. 

To reach these goals, the PTO is focusing on several specific initiatives:

International worksharing: The USPTO, EPO and JPO have agreed to use PCT search and examination results in their worksharing approach.  Director Kappos sees that option as having 'the potential to dramatically increase the number of applications eligible for [Prosecution Highway] processing.'  The prosecution highway 'concept is fairly straightforward.'

[W]hen an office determines that one or more claims are patentable in one application, the applicant may request fast-track examination of the same or similar claims in the second, related application filed with the second office. To have the request for fast-tracking accepted, the applicant must make available to the second office the relevant work of the first office as well as any necessary translations. By restricting the scope of claims presented to the second office, and by requiring the applicant to make the relevant work from the first office available to the second office, the PPH promotes a high degree of reutilization of first office work. The PPH also respects the principle of sovereignty noted above because each office maintains responsibility for the final determination of patentability in accordance with applicable law.

Hiring: The USPTO is looking to hire 1000 additional patent examiners over the next two years. The bulk of these examiners would preferably be experienced IP professionals but could be part of a 'nationwide workforce.'   With the absence of funding, the PTO has hired only nine (9) examiners during FY2010 and 127 examiners have left their positions.

Funding: Director Kappos would hope for fee setting authority to allow for an 'interim fee adjustment on patent fees to provide resources in the intermediate term; and an operating reserve to ensure adequate reserves to address multi-year budget plans and fluctuations in revenues.'

In his testimony, Damon Matteo, Chairman of the PPAC also indicated that 'temporary' administrative fee-setting authority may well be the best first-step in patent office reform. 

We believe that to assure adequate funding levels for the long term, the USPTO needs authority to set and adjust fees administratively, so that it can properly establish and align fees in a timely, fair and consistent manner to recover the actual costs of USPTO operations and without going through the inherently long delays in the legislative process. This will afford the USPTO the opportunity to reform its funding model holistically to operate in a more businesslike fashion. After a period of time, or once the USPTO is on firmer fiscal footing, the fee-setting authority can be revisited.

Documents:

• Prepared Testimony