Commissioner for Patents speaks at DLA Piper

Intellectual Property and Technology News

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At a recent lunch briefing in DLA Piper’s San Francisco office, Robert Stoll, Commissioner for Patents at the United States Patent and Trademark Office, addressed a group of IP lawyers regarding key initiatives to improve the USPTO’s efficiency and productivity.

Commissioner Stoll began by discussing the proposed America Invents Act, formerly the Patent Reform Act of 2011. A key provision, he explained, is a shift from the present “first-to-invent” regime to a “first-to-file” system which creates more certainty and helps all inventors, including the small inventor, while placing the USPTO in the same legal structure as other IP offices. He believes this change is an important step in creating global harmony in patent law, which he described as the least harmonized of the world’s intellectual property laws. Applicants will benefit from a streamlined application process when one standard is applied in all offices. This increases their global competitiveness and the strength of their patents.

Commissioner Stoll went on to explain that global IP patent law harmonization will increase existing work sharing arrangements through closer coordination and collaboration. The benefit to both applicants and IP offices is the reduction in costs and in examination times for applicants filing in multiple offices. He discussed several global work sharing programs that have shown promising results, among them the Patent Prosecution Highway, which has 15 participating offices. He also cited the work of the IP5 and Trilateral projects in establishing a solid foundation and said the timing to move these initiatives forward is good, as he believes US patent reform is progressing positively.

Commissioner Stoll discussed efforts to reduce the backlog of applications and application pendency. The ability of the Office to hire new examiners to add more resources to these tasks is directly tied to funding, which currently does not allow hiring of much-needed new examiners. The America Invents Act contains a provision to grant the USPTO its own fee setting authority and full access to all of its funds.

Speaking next about enhanced timing control, Commissioner Stoll explained three featured tracks of examination. Track 1 provides for accelerated examination, requiring increased fees and providing final disposition within 12 months of the request. Track 2 is regular examination, while Track 3 will enable applicants to defer decision making for inventions of uncertain value by delaying examination and payment of fees. Although this program has been put on hold until funding is available, the USPTO continues to offer a suite of other programs that accelerate examination, among them the Green Tech program, Accelerated Exam, Project Exchange and Petitions to Make Special.

Commissioner Stoll also discussed the USPTO’s efforts to address the backlog of old cases still awaiting examination, a number he described as unacceptable. The short-term solution, he explained, is to analyze rebalance workloads by sharing resources both within and across technology centers. Through these efforts, over 20 percent of older cases have been completed during the last three months. To address the issue long term, he said the USPTO needs to have more flexibility in docketing cases; identify sister technology areas to better leverage examiner expertise; and match examiner resources to workload demand.

Part of the strategy of achieving pendency and backlog reduction goals is to give examiners the right set of tools. This means upgrading the USPTO’s current IT infrastructure and software applications to provide examiners with the most technologically advanced tools for searching, docket management, communication and collaboration. The efforts to improve the IT systems at the USPTO have begun, and they too depend on a fully funded Agency to see their successful completion.

Through these initiatives, the USPTO and Commissioner Stoll are making significant strides toward improving efficiency and productivity. In fact, the USPTO met all of its quality measure targets in 2010.