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Practicing Law Institute Robert Clarke Director, Office of Patent Legal Administration March 2-3, 2009

Practicing Law Institute Robert Clarke Director, Office of Patent Legal Administration March 2-3, 2009. UPR Filings. FY 08 468,669 Growth of 6.1% from ‘07. Filings, First Actions, & Backlog. FY08 Backlog increased 1.4% Filings increased 6.1% 1st Actions increased 16.6%.

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Practicing Law Institute Robert Clarke Director, Office of Patent Legal Administration March 2-3, 2009

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  1. Practicing Law Institute Robert Clarke Director, Office of Patent Legal Administration March 2-3, 2009

  2. UPR Filings • FY 08 468,669 • Growth of 6.1% from ‘07

  3. Filings, First Actions, & Backlog • FY08 • Backlog increased 1.4% • Filings increased 6.1% • 1st Actions increased 16.6%

  4. RCE and Continuations Percentage of Total UPR Filings

  5. Patent Pendency – FY 2008 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.

  6. Hires and Attritions Staff includes UPR Examiners, SPEs and academy trainers.

  7. End-of-Year Statistics (FY 2008) • 468,669 UPR applications filed • 28,217 design applications filed • 6.1% filing growth over 2007 • 9.5% attrition (9.9% in FY07, 10.6% in FY06) • Patents Staff is composed of the following: • 6,055 examiners • 414 Supervisory Patent Examiners • 101 Quality Assurance Specialists • 48 SPE/trainers for Patent Training Academy

  8. Quality Results • Improving Quality is our Highest Priority.

  9. Allowance Error Rate

  10. Allowance Rate 42% 1st Quarter 2009

  11. Performance Measures FY’02-08

  12. Affirmance Rate* at BPAI by TC * Affirmed and Affirmed in Part

  13. Patents’ Initiatives • And • Projects • Present and Future - Issues and Solutions

  14. Enhance Recruitment & Retention Efforts Implement University Style Patent Training Academy Expand telework initiatives Explore the development of alternative approaches to examination in collaboration with stakeholders such as deferred examination Pilot Peer Review of Published Applications Implement Accelerated Examination Initiative Pilot First Action Interview Continue increase of e-filing Study/Pilot/Implement Worksharing amongst IP Offices such as patent prosecution highway programs A Sample of the Strategic Plan Initiatives

  15. Hiring & Recruitment • Hiring Efforts • FY 2008:1211 Examiners hired • Anticipate hiring 1200 per year for FY 2009 - FY 2012 • Bring Patent Corps up to 8400 examiners by the end of FY 2012 • Recruiting • Targeted TV, print, radio, and Internet banner advertising: “Examine the Possibilities” • Increased career and job fair participation • Recruitment incentives • Partnerships with universities

  16. Top Recruiting schools for FY’08

  17. FY’08 Hire information

  18. Training Academy • Eight month university style training academy • Begun in FY 2006 • Have begun 30 classes; graduated 22 • Nearly 2,289 new examiners graduated into the corps to date • Facilitate more efficient training of large numbers of new hires; reduce early attritions • Foreign Examiners In Residence (FEIR) • Chief Scientist / Academy Professor Position

  19. Outreach Programs • University Outreach • Educating students on intellectual property • Ensuring that students are thinking about protecting their own innovations • Ensuring that students understand the impacts of piracy and other forms of intellectual property theft • Ensuring USPTO name recognition • Ensuring that students know the advantages of a career at the USPTO • Creating a pool of potential hires who have a foundation of patent examination knowledge • Engaged with Kettering University in discussing a joint project on having a patent examiner training lab at the school where students or graduates could get their initial training in Michigan and from there they could be hired as examiners or converted to examiners • Leveraging university resources to train examiners

  20. Deferred Examination Roundtable • The USPTO conducted a roundtable to obtain public input from diverse sources to determine whether the support expressed for deferral of examination is isolated or whether there is general support in the patent community and/or the public for the adoption of some type of deferral of examination • See www.uspto.gov for more details

  21. 37 CFR 1.138(d) • The current rules of practice (37 CFR 1.138(d)) permit applicants to “drop out” in applications filed on/after December 8, 2004 by filing a letter of express abandonment and obtain a refund of any search and excess claims fees paid for the application. • Only 2530 such requests have been received in the last three calendar years. • 2006 279 • 2007 346 • 2008 1905

  22. Chamber of Commerce Report • Some critical issues raised in the Chamber of Commerce Report: • Improve the quality of U.S. Patents • Provide adequate resources to do the job • Reform the patent examiner production system • Improve the timeliness of administrative actions • Strengthen the PTO’s relationship with the user community • Enhance organizational management • Appoint a well-qualified undersecretary and director • Permit applicants to defer examination • Rethink the current fee schedule • Enhance efficiency of the examination process by reforming examiner and applicant incentives • http://www.theglobalipcenter.com/gipc/default

  23. Improvements to Public PAIR • USPTO goal is to have all the public data available all the time to the public  • The Public PAIR system was built to replace the need for an individual to go to Northern Virginia to get public patent application data.  It was not designed to accommodate large and highly frequent requests of this data  • Starting in Fall 2007, automated queries against the system negatively impacted the ability of the intended users to interact with the system • In December 2007, USPTO used standard web tools to ensure that manual users interact with the system thus providing equitable access to the data  • In December 2008, USPTO applied fixes to the Public PAIR system that have kept the system functioning • Currently the USPTO is reviewing initiatives to further enhance public data search capabilities

  24. Comparison of Examining Experience Among TC's as of FY’08

  25. Retention • Initiatives to develop USPTO as an “employer of choice” • “Maximum Opportunity” & “Maximum Flexibility”: • Telework • Hoteling • Flexible work hours • Retention bonuses • Higher general pay

  26. Patents Teleworking & Laptop Programs • Over 1,400 employees participating in the Patents Hoteling Program, since initiated in 2006 • Program allows examiners to work from home 4 days per week with USPTO electronic tools • Will add additional 500 examiners to program in FY 2009

  27. TSS Hoteling Program • Piloted from September 2006 to September 2007 • Currently, 87 TSS hoteling • Survey indicated high levels of satisfaction with pilot and desire to continue

  28. Patents Teleworking & Laptop Programs • Over 2200 laptops distributed through PELP • Both Hoteling and Laptop programs show production gains in line with increase in total examination time, as well as improved morale and job satisfaction

  29. Worksharing • Number of initiatives underway to promote examination efficiencies in participating IP offices. • Patent Prosecution Highway (PPH) • An initiative which leverages fast-track patent examination procedures available in Partnering Offices to obtain patents faster and more efficiently. • It permits Partnering Offices to benefit from work previously done by the other office, in turn reducing examination workload and improve patent quality. • Full implementation (January 4, 2008) - JPO • Pilot – UK IPO, CIPO (Canada), EPO, IPAU (Australia) and KIPO (Korea)

  30. Worksharing - Foundation Projects • Common documentation database (EPO): Assemble a common set of relevant patent and non-patent literature from around the world to assist patent examiners in their prior art searches • Common approach for a hybrid classification (EPO): Enable joint and efficient updating of patent classification and facilitate reuse of work among the patent offices • Common application format (JPO): Facilitate the filing procedure of each office by using a common application format and an electronic or digitized patent application filing (in XML) and subsequent processing and publication in XML • Common access to search & examination results (JPO): Enable examiners to find one-stop references in the dossier information of other offices, such as search and examination results, and conduct priority document exchange (PDX) to reduce costs of ordering copies of priority documents for applicants and administrative costs of electronic processing for offices • Common training policy (KIPO): Standardize the training of patent examiners at each office, helping examiners to produce equivalent results of search and examination at the five offices • Mutual machine translation (KIPO): Help offices overcome the language barrier of patent information and allow greater access to each other's patent information • Common rules for examination practice & quality control (SIPO): Execute patent examinations at a similar standard and quality through common rules of examination practice and quality control • Common statistical parameter system for examination (SIPO): Establish a system of common statistical parameters for all examinations at the five offices; and conduct statistical tasks and exchange information on examination practices under common rules and parameters, building on work of the Trilateral statistical working group • Common approach to sharing & documenting search strategies (PTO): Promote re-utilization by enabling patent examiners of each office to understand each other's search strategy • Common search & examination support tools (PTO): Establish system of common search and examination tools to facilitate work-sharing

  31. PDX (Priority Document Exchange) Statistics for 2008 *These figures represent requests that resulted in successful document exchanges

  32. PPH Statistics

  33. Peer Review Pilot • For members of the public to submit prior art with commentary, using Internet peer review techniques, in volunteered published applications to a public website (www.peertopatent.org) • 143 applications volunteered • TC 2100 and 3600 Business Methods technology only • 10 pieces of prior art max per application (avg. was 4) • 56 applications have received at least a first action on the merits • 7 received a rejection using peer found prior art • 10 others received a rejection using art found by both the examiner and the peers • 39 art found by examiner • Pilot extended 1 year to include Business Methods – Class 705 • Encourage more participation • Technology heavy with Non-patent literature • Over 22,000 letters from the USPTO were mailed out in applications that may be eligible for the pilot, 52 consent forms were filed as a direct result of this mailing

  34. Accelerated Examination • Change in practice effective August 25, 2006. • Opportunity for final determination in 12 months. • Participation requires: • Applicants provide greater information up front – pre-examination search and accelerated examination support document • File application using electronic fling system • Agree to interviews • Limited number of claims

  35. Accelerated Examination Current Statistics • As of January 2009: • 578 applications allowed • On average, 194 days to complete prosecution • Minimum number of days to complete prosecution: 18 • 69.7% Allowance Rate for FY’08 • Participants’ response & comments positive • Not only faster, but high quality

  36. Accelerated Examination Current Statistics

  37. Status of AE petitions by month filed

  38. First Action Interview Pilot • Applicant requests to participate, 493 applicants had joined the pilot • Application is NOT taken out of turn • “Preliminary office action” is prepared and mailed to applicant – condensed version of typical first action on the merits • After interview applicant receives copy of action or allowance with entry of proposed amendment • Piloted in two workgroups of TC 2100

  39. FAI Statistics as of January 6, 2009 • 493 Applicants have joined the pilot program • 267 Pre-interview Communications (PFA OA) have been mailed • 181 Interviews have been conducted • 145 First Action Interview Office Actions have been mailed • 55 Allowances (19 first action allowances) • 19 Final rejections have been mailed • 11 Abandonments

  40. 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. • 2008 result: 71.6% of applications filed electronically. • 2009 Goal: 80% • As of Dec 14, 2008, 147,640,728 pages have been filed using EFS

  41. Contact Information • Robert Clarke • robert.clarke@uspto.gov • 571-272-7735

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