Patent Law Institute Seminar “2 nd Annual Patent Law Institute” January 14-15, 2008 - New York January 28-29, 2008 - S

1. Patent Law Institute Seminar “2nd Annual Patent Law Institute” January 14-15, 2008 - New York January 28-29, 2008 - San Francisco Robert Clarke, Director Office of Patent Legal Administration (OPLA)

2. Topics • Statistical Update • Patents Operations Update for FY 2007 • Strategic Planning & the Future of the USPTO • On-Going Quality Initiatives and Programs • Fulfilling the goal of continuous improvement

3. STATISTICAL UPDATE Progress in FY 2007

4. FY 2007 Quality Results • Improving Quality is our Highest Priority

5. FY 2007 Quality Results • 2006 results: 96.5% allowance compliance and 90.0% in-process compliance • 2007 goals: >=96% allowance compliance and >=90% in-process compliance • 2007 results: 96.5% allowance compliance and 92.2% in-process compliance

6. Allowance Error Rate

7. Allowance Rate

8. Error and Allowance Rates

9. Performance Measures FY02-07

10. As of September 30, 2006 701,147 applications awaiting first action by the examiner 4883 UPRD examiners 397 supervisors 29 patent academy trainers 22 TC directors As of September 30, 2007 760,924 applications awaiting first action by the examiner 5,477 UPRD examiners 422 supervisors 56 patent academy trainers 24 TC directors End-of-Year Stats FY06 vs. 07

11. UPR filings • FY ‘07 440,617 (preliminary) • Growth of 5% from ‘06

12. UPR Production • 2007 goal: 323,900 Balanced Disposals (BDs) • 2007 results: 350,886 BDs

13. Patent Pendency - FY 2007 1“Average 1st action pendency” is the average age from filing to first action for a newly filed application. 2“Average total pendency” is the average age from filing to issue or abandonment of a newly filed application.

14. Hires and attritions Examiners, SPEs and Academy trainers only.

15. Electronic filing • New EFS-Web system launched March 2006 • allows PDF-based submissions • replaced XML-based system • 2005 result: 2.2% of applications filed electronically • 2006 result: 14.3% of applications filed electronically • 2007 goal: 40% of applications filed electronically • 2007 results: 49% of filings received electronically (preliminary)

16. STRATEGIC PLANNING AND THE FUTURE OF THE USPTO http://www.uspto.gov/web/offices/com/strat2007/

17. STRATEGIC PLAN 2007-2012 • Strategic Plan released to the public week of March 28, 2007 • Plan is the outcome of a collaborative process • Plan builds upon the record-breaking progress made during FY 2006. • Patents Role in Strategic Plan - Optimize Patent Quality & Timeliness

18. USPTO Strategic Goal 1: Optimize Patent Quality & Timeliness • Patents must address many challenges and opportunities, for example: • Confidence in patent quality • Number and technical complexity of patent applications • Hiring and training of new patent examiners • Best and necessary use of electronic tools and resources • Examination Alternatives

19. Patents Strategic Plan Objectives • #1 Provide high quality examination of patent applications • #2 Improve and integrate existing electronic systems to promote full and electronic patent application processing; implement better/moresecure systems • #3 Improve the quality and timeliness of patent examination by exploring a range of approaches to examining applications

20. Patent Training Academy Expand telework & explore establishing regional/remote/local USPTO offices Explore the development of alternative approaches to examination in collaboration with stakeholders Peer Review of Published Applications Enhance Search Quality Design & implement a comprehensive quality system Examination reform through rule making to focus examination & enhance information exchange Continued increase of e-filing A Sample of the Strategic Plan Initiatives

21. Patents Teleworking & Laptop Programs • 506 examiners entered the Patents Hoteling Program in 2006, 503 entered in 2007 • 500 more planned to begin in 2008 • Program allows examiners to work from home 4 days per week with USPTO electronic tools • 2314 laptops with remote access software distributed on pilot to work overtime • 66 of these later joined hoteling program

22. Peer Review Pilot • Post up to 250 volunteered published applications to non-USPTO website for the purpose of collaborative review • Using established Internet peer review techniques, will determine up to 10 best references • Supply to USPTO through 37 CFR § 1.99 submission • For pilot, only applications classified in TC 2100 • Pilot launched June 2007

23. Rules Changes • Claims and Continuing Applications • Notice of Final Rulemaking Published August 21, 2007 • Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications • Information Disclosure Statements • Notice of Proposed Rulemaking Published July 10, 2006 • Alternative Claims • Notice of Proposed Rulemaking Published August 10, 2007

24. Policy/Practice Initiatives • Alternative Examination Products • Patentee / Trade Organization / User Input • Wants and Needs for IP Protection • Different Levels of Examination / Protection • Deferred Examination • Peer Review • Collaborative Examination

25. QUALITY Fulfilling the goal of continuous improvement

26. Pre-Appeal Brief Conferences Appeal Conferences Patent Examiner Training Academy Central Reexamination Unit Accelerated Examination On-Going Quality Initiatives – Examples & Updates

27. Pre-appeal brief conferences • Program began July 12, 2005 • Extended February 7, 2006 • Over 10,000 conferences conducted • During FY ’07, approx. 4600

28. Pre-appeal brief conferences

29. Appeal Conferences • Appeal conference required in every application having a brief • Conferees include: • Examiner • SPE • Appeal Conferee (appeal specialist, another primary or QAS) • In the fourth quarter of FY 07, over 75% of conferences decided to proceed to BPAI

30. Affirmance Rate at the BPAI

31. Training Academy • 11 classes hired through training academy in 2007, including 1196 of 1215 examiners hired • An additional ten classes to be hired in FY08. • Foreign Examiners In Residence (FEIR) • Global Intellectual Property Academy (GIPA)

32. Central Reexam Unit (CRU) • Initiated in July 2005 to improve quality & timeliness of patent reexaminations • Currently, approximately 1600 total ex parte and 250 inter partes reexamination proceedings pending prior to certificate

33. Accelerated Examination • Change in practice effective August 25, 2006 • First patent, prosecuted in compliance with AE program, issued March 13, 2007 • Guidance provided on USPTO website at http://www.uspto.gov/web/patents/accelerated/

34. Accelerated Examination • 354 AE petitions decided on merits • 217 Granted • 59 Allowances • 2 Abandonments • 47 Final Rejections • 109 Pending disposition • 61 Denied on merits • 76 Dismissed • Of 17 filed before FY 07 and later granted, 14 allowed and 3 finally rejected

35. Contact Information • Robert Clarke, Director Office of Patent Legal Administration e-mail: Robert.Clarke@uspto.gov Phone: (571) 272-7735

36. Thank you.