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

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

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

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 Technology Center Average 1 st Action Pendency (months) 1 4 th Quarter FY08 Average Total Pendency (months) 2 4 th Quarter FY08 1600 - Biotechnology and Organic Chemistry19.934.8 1700 - Chemical and Materials Engineering27.536.3 2100 - Computer Architecture Software and Information Security30.842.4 2600 Communications32.543.6 2800 - Semiconductor, Electrical, Optical Systems19.528.2 3600 - Transportation, Construction, Electronic Commerce24.334.8 3700 - Mechanical Engineering, Manufacturing and Products24.732.7 UPR Total 4 th Quarter FY 200825.632.2 1 Average 1 st 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. 160017002100240026002800360037004100Corps FY 07 Hiring631602122911341821731215 FY 07 Attrits395394121925292543 FY 07 EOY Staff5676331012111610727026985800 FY 08 Hiring332091832941321731871211 FY 08 Attrits4258105135866988583 FY 08 EOY Staff540597622531770101169464410086417 FY 09 Hiring Goal64144 802401281762241200

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. 2006 Result2007 Result2008 Result 3.5% allowance error 3.7% allowance error 90% in-process compliance 92.2% in-process compliance 92.5% in-process compliance

9 Allowance Error Rate

10 Allowance Rate 42% 1 st Quarter 2009

11 Performance Measures FY02-08

12 Affirmance Rate* at BPAI by TC Technology CenterFY 2006FY 2007FY 2008 1600 Biotech54%73%70% 1700 Chemical Eng.77%81%80% 2100 Computers60%68%76% 2600 Communications62%80%74% 2800 Electrical70%74%77% 3600 Mechanical50%63%70% 3700 Mechanical Eng.56%73% Corps. Total62%72%74% * Affirmed and Affirmed in Part

13 Patents Initiatives And Projects Present and Future - Issues and Solutions

14 A Sample of the Strategic Plan Initiatives 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

15 Hiring & Recruitment Hiring Efforts FY 2008:1211 Examiners hired Anticipate hiring 1200 per year for FY 2009 - FY 2012 oBring 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 FY08 SchoolNumber of Hires University of Maryland 70 George Mason University 41 Virginia Tech 41 Johns Hopkins University 31 Penn State University 25 North Carolina State University 23 University of Michigan 21 Georgia Institute of Technology 19 Clemson University 18 New Jersey Institute of Technology 18 University of Virginia 18

17 FY08 Hire information

18 Training Academy Eight month university style training academy Begun in FY 2006 Have begun 30 classes; graduated 22 o 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 n 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. 2006279 2007346 20081905

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 PTOs 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 n USPTO goal is to have all the public data available all the time to the public n 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 n Starting in Fall 2007, automated queries against the system negatively impacted the ability of the intended users to interact with the system n In December 2007, USPTO used standard web tools to ensure that manual users interact with the system thus providing equitable access to the data n In December 2008, USPTO applied fixes to the Public PAIR system that have kept the system functioning n Currently the USPTO is reviewing initiatives to further enhance public data search capabilities

24 Comparison of Examining Experience Among TC's as of FY08

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 n Piloted from September 2006 to September 2007 n Currently, 87 TSS hoteling n 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 Incoming Requests* Outgoing Requests* From EPOFrom JPOFrom KIPO To EPOTo JPOTo KIPO Jan874137- 3163136- Feb581135- 3854490- Mar504191- 4714559- Apr437120- 4094439- May502163- 4404732- Jun807197- 4073140- Jul538145- 6936567- Aug815293- 6636211- Sept906265- 6876296- Oct1077320- 184610909- Nov386187647 31604950 Dec89282275 2303522733 *These figures represent requests that resulted in successful document exchanges

32 PPH Statistics PPH PartnerTypeStart DateEnd dateRequests Received (1/1/09) JPOpilot7/3/061/3/08274 JPOFull1/4/08520 UKIPOpilot9/4/079/4/08 (extended until further notice) 50 KIPO (Korea)pilot1/28/081/28/09125 CIPO (Canada) pilot1/28/081/28/096 IPAU (Australia) pilot4/14/084/14/094 EPOpilot9/29/089/29/094

33 Peer Review Pilot n 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)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) n 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 n Pilot extended 1 year to include Business Methods Class 705 Encourage more participation Technology heavy with Non-patent literature n 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 oOn average, 194 days to complete prosecution oMinimum number of days to complete prosecution: 18 69.7% Allowance Rate for FY08 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 [email protected] 571-272-7735

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

Documents

patent pendency fy

attrits395394121925292543

attrits4258105135866988583

corps fy

process compliance slide

patent training academy

allowance error rate

year statistics fy