The United States Patent and Trademark Office

The United States The United States Patent and Trademark OfficePatent and Trademark Office

March 15, 2005March 15, 2005

BCP Customer Partnership Meeting

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Contact InformationContact Information

John Doll

Deputy Commissioner for Patent Planning and Resources

[email protected]

571-272- 8250

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Contact InformationContact Information

Peggy Focarino

Deputy Commissioner for Patent Operations

[email protected]

Joe Rolla

Deputy Commissioner for Patent Policy

[email protected]

571-272-8800

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Commissioner for Patents

Nicholas P. Godici

To Retire March 29th

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Commissioner for Patents

Star SearchStar Search

[email protected]

Wanted:

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Jon’s New Initiatives Jon’s New Initiatives

Reexamination Special Dispatch

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PCT Timeliness of Actions

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PCT Timeliness of Actions

BPAI Appeals 60% never make it

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Search Quality Search Grids Search Recordation Search QR

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Patentability Conferences Quality & Training

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Patentability Conferences Quality & Training

2nd Pair of Eyes Redefine

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Jon’s New InitiativesJon’s New Initiatives

e-filing probably in XML tagged format All follow on papers must be e-filed

Limited number of claims 2 – 3 independent / 20 – 30 dependent

Patentability search With explanation of each reference with respect to claims

Mandatory telephone restriction elections

Mandatory interview either before or right after first action

2 month shortened statutory time for response With no extensions

Mandatory appeal

Accelerated Examination InitiativeAccelerated Examination Initiative

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UPR Applications FiledUPR Applications Filed

0

50000

100000

150000

200000

250000

300000

350000

400000

1995

1996

1997

1998

1999

2000

2001

2002

2003

2004

2005

FY 04 355,527

6.6% above FY 03

FY 05 plan 375,080 (5.5% above FY 04)

118,235 as of 1/28

Current projection102.6% over plan

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FY 04 UPRFY 04 UPR1 Applications Filed Applications Filed

Technology Center FY 04 FY 03 to FY04 Growth Rate

1600 - Biotechnology and Organic Chemistry 38,164 -1.2%

1700 - Chemical and Materials Engineering 49,334 -0.5%

2100 - Computer Architecture Software and Information Security 34,653 17.9%

2600 - Communications 48,210 16.1%

2800 - Semiconductor, Electrical, Optical Systems 81,144 7.6%

3600 - Transportation, Construction, Electronic Commerce 47,489 4.8%

3700 - Mechanical Engineering, Manufacturing and Products 56,533 5.5%

UPR Total 355,527 6.6%

1 “UPR” = Utility, Plant, and Reissue Applications

FY 05 TC filings not yet available. Initial processing imposes a two to four month delay in assignment to a TC.

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FY 04 Patent PendencyFY 04 Patent Pendency

Technology CenterAverage 1st Action

Pendency1 (months)

Average Total Pendency 2

(months)

1600 - Biotechnology and Organic Chemistry 19.2 29.9

1700 - Chemical and Materials Engineering 17.9 27.6

2100 - Computer Architecture Software and Information Security 33.3 41.1

2600 - Communications 31.4 40.5

2800 - Semiconductor, Electrical, Optical Systems 14.0 23.9

3600 - Transportation, Construction, Electronic Commerce 15.6 24.1

3700 - Mechanical Engineering, Manufacturing and Products 15.2 24.1

UPR Total 20.2 27.61 “Average 1st action pendency” is the average age from filing to first action for a newly filed application,

completed during 4th quarter FY 2004.2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed

application, completed during 4th quarter FY 2004.

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FY 05 Patent PendencyFY 05 Patent Pendency (as of 12/31/04) (as of 12/31/04)


Pendency (months)1Average Total

Pendency (months)2

1600 - Biotechnology and Organic Chemistry 20.2 29.7

1700 - Chemical and Materials Engineering 18.1 28.2

2100 - Computer Architecture Software and Information Security 34.2 41.9

2600 – Communications 31.2 40.8

2800 - Semiconductor, Electrical, Optical Systems 14.3 23.9

3600 - Transportation, Construction, Electronic Commerce 16.6 24.8

3700 - Mechanical Engineering, Manufacturing and Products 15.6 24.2

UPR Total (as of 12/31/2004) 20.7 26.8

FY 05 Target 20.7* 31.0

1 “Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during 1st quarter FY 2005.

2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed application, completed during 1st quarter FY 2005.

* Assuming current input and output estimates, the agency should achieve first action pendency of 21.3 monthsby the end of FY 2005.

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FY 04 Patent PendencyFY 04 Patent Pendency


Pendency1 (months)


(months)

1610 – Organic Compounds: Bioaffecting, Body Treating, Drug Delivery, Steroids, Herbicides, Pesticides, Cosmetics and Drugs

18 28.2

1620 – Organic Chemistry 13.6 24.3

1630 – Molecular Biology, Bioinformatics, Recombinant DNA/RNA, Gene Regulation, Nucleic Acid Amplification

23.3 34.5

1640 – Immunology, Receptor/Ligands, Cytokines, Recombinant Hormones, Molecular Biology

23.5 36.2

1650 – Fermentation, Microbiology, Proteins/Enzymes 20.7 32.4

1660 - Plants 6.6 15.8

UPR Total 19.2 29.91 “Average 1st action pendency” is the average age from filing to first action for a newly filed application,

completed during 4th quarter FY 2004.2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed

application, completed during 4th quarter FY 2004.

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FY 05 Patent PendencyFY 05 Patent Pendency (as of 12/31/04) (as of 12/31/04)

1 “Average 1st action pendency” is the average age from filing to first action for a newly filed application,

completed during 1st quarter FY 2005.2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed

application, completed during 1st quarter FY 2005.


Pendency1 (months)


(months)

1610 – Organic Compounds: Bioaffecting, Body Treating, Drug Delivery, Steroids, Herbicides, Pesticides, Cosmetics and Drugs

19.8 26.9

1620 – Organic Chemistry 14.3 24.3

1630 – Molecular Biology, Bioinformatics, Recombinant DNA/RNA, Gene Regulation, Nucleic Acid Amplification

24.2 35.1


23.9 35.8

1650 – Fermentation, Microbiology, Proteins/Enzymes 19.6 31.9

1660 - Plants 7.5 15.7

UPR Total 20.2 29.7

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1600 1700 2100 2600 2800 3600 3700 Total* Design

New Applications1 9/30/2003

43,358 52,388 66,645 85,917 57,528 45,622 50,280 457,254 11,704

New Applications1

9/30/200455,402 63,923 71,778 97,380 77,651 56,738 65,005 508,878 18,451

Overall Pending Applications2

9/30/200382,827 92,412 88,387 121,558 118,899 87,153 91,170 737,944 22,533

Overall Pending Applications2

9/30/200495,006 105,447 102,440 138,822 137,458 101,097 108,039 809,323 27,599

TC Application InventoryTC Application Inventory

1 “New Application inventory” is the number of new applications designated or assigned to a technology center awaiting a first action.

2 “Overall Pending Application inventory” is the total number of applications designated or assigned to a technology center in an active status. Includes new applications; rejected awaiting response; amended; under appeal or interference; suspended; reexams and allowed applications awaiting grant publication.

* Total inventory includes approximately 55,000 applications awaiting processing 9/30/2003, and approximately 22,000 applications awaiting processing 9/30/2004.

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Inventory by Art ExamplesInventory by Art Examples

High Inventory Art AreasMonths of Inventory*

Low Inventory Art Areas Months of Inventory*

1614, 1615, and 1617 – Drugs, Bio-affecting and Body Treatment

47 – 53 1620 – Organic Chemistry 17

1743 – Chemical Analysis 371734 – Adhesive Bonding and Coating Apparatus

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2127 – Computer Task Management 622125 – Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control

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2611 – Interactive Video Distribution 722651, 2653 – Information Storage and Retrieval

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2836 – Control Circuits 44 2831 – Electrical Conductors 9

3620 – Business Methods 34 – 106 3651 – Conveying 9

3731 and 3737 – Medical Instruments, Diagnostic Equipment

46 – 543742 – Thermal and Combustion Technology

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*The number of months it would take to reach a first action on the merits (e.g., an action addressing patentability issues) on a new application filed as of Jan 2005 at today’s production rate. Today’s production rate means that there are no changes in production due to hiring, attrition, changes to examination processing or examination efficiencies, and that applications are taken up in the order of filing in the given art unit/area. Of course, USPTO is taking aggressive steps to ensure changes that will significantly lower the inventory rates in high-inventory art areas.

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Inventory by Art ExamplesInventory by Art Examples

Art Areas Months of Inventory*

1614, 1615, and 1617 – Drugs, Bio-affecting and Body Treatment 47 – 53

1616 – Steroids, Herbicides, Pesticides 26

1620 – Organic Chemistry 17

1631 – Bioinformatics 20

1632-1639 – Molecular Biology, Nucleic Acids, Recombinant DNA/RNA, Gene Regulation, Gene Therapy, Animals and Recombinant Plants, Combinatorial/Computational Chemistry

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1650 – Fermentation, Microbiology, Isolated and Recombinant Proteins/Enzymes 23

1660 – Plants 9

*The number of months it would take to reach a first action on the merits (e.g., an action addressing patentability issues) on a new application filed as of Jan 2005 at today’s production rate. Today’s production rate means that there are no changes in production due to hiring, attrition, changes to examination processing or examination efficiencies, and that applications are taken up in the order of filing in the given art unit/area. Of course, USPTO is taking aggressive steps to ensure changes that will significantly lower the inventory rates in high-inventory art areas.

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1600 Workload Analysis1600 Workload Analysis

Filings FAOMsPCT

Production

FY 02 41,641 29,727 5,938

FY 03 38,613 27,875 10,021

FY 04 38,164 26,510 10,183“FAOM” = First Action on the Merits – first action count by an examiner after the filing of an application

(does not include restrictions or other miscellaneous actions).

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TC 1600 Rework* StatisticsTC 1600 Rework* Statistics

*Rework first actions are those actions that are in a Continuing, CPA or RCE application.

TC GroupFY 2000

% Rework of FAOMs

FY 2001% Rework of FAOMs




1610 32.2% 34.2% 39.1% 47.0% 45.5%1620 27.1% 26.8% 26.6% 28.8% 26.6%1630 36.9% 41.2% 46.2% 46.9% 47.5%1640 41.4% 41.7% 44.6% 48.6% 53.1%1650 32.4% 35.7% 35.0% 38.3% 39.3%1660 5.9% 2.2% 3.8% 4.1% 4.3%

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Restriction/Divisionals in 1600Restriction/Divisionals in 1600

Written Restrictions Divisionals Filed

FY 00 9,267 3,326

FY 01 11,435 3,832

FY 02 13,193 3,988

FY 03 11,899 3,918

FY 04 11,415 3,489

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Patents Issued in TC 1600Patents Issued in TC 1600

TC Group 2002 2003 2004

1610 3,434 3,395 2,3071620 5,664 5,338 4,2561630 1,872 2,413 2,1761640 2,075 2,069 2,0181650 2,604 2,005 1,6861660 930 1,196 1,013

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1600 1700 2100 2600 2800 3600 3700 Corps

FY 04 % First Action Allowances 13.0% 17.8% 10.3% 13.5% 27.1% 12.1% 17.9% 17.4%

FY 05 % First Action Allowances

Through 1/11/0512.5% 15.7% 9.7% 13.6% 28.8% 14.1% 17.0% 17.5%

TC 1TC 1stst Action Allowances* Action Allowances*

* TC First Action Allowances are calculated from first action counts received by an examiner. A first action restriction performed by an examiner is not a ‘first action count’ and thus an allowance following a first action restriction is included as a first action allowance count. A first action allowance following the filing of an RCE is included. An examiner receives both a first action count and a disposal count for first action allowances.

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Quality of ProductsQuality of Products

Fiscal Year 2004

1600 1700 2100 2600 2800 3600 3700 DesignFY 04 Total

FY 05 Target

Application In-Process

Review Compliance

Rate1

76.4% 83.1% 88.3% 74.2% 86.8% 79.6% 81.7% 90.4% 82.0% 84%

Patent Allowance Error Rate2

4.40% 8.03% 3.05% 2.53% 3.39% 7.54% 9.01% 3.28% 5.32% 4.0%

1Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution).

2Patent allowance error rate is the percent of allowed applications reviewed having at least one claim which is considered unpatentable on a basis for which a court would hold a patent invalid. “Allowance” occurs before a patent is issued, so these errors are caught before any patent is actually granted.

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Hires and AttritionsHires and Attritions

1600 1700 2100 2600 2800 3600 3700 Corps Design

FY 04 Hires 75 35 115 116 31 26 45 443 15

FY 04 Attritions 30 26 58 82 58 43 39 336 4

FY 05 BOY Examiner Staff

417 440 563 658 742 422 439 3681 72

FY 05 Hiring Goal 100 35 200 150 160 90 125 860 20

FY 05 Hiring Summary (2/7/05)*

26 16 42 46 68 18 13 229 0

New Hire Percentage of Total

24% 8% 36% 23% 22% 21% 28% 23% 28%

*Includes hires on board and confirmed and pending offers

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1600 New Examiner Hiring1600 New Examiner Hiring

Workgroup Number Hiring

1610 16

1620 4

1630 35

1640 30

1650 15

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Patents e-Government InitiativesPatents e-Government Initiatives

EFS Web Interface pdf1 application submission

Tri-lateral Dossier Access with EPO

Priority Document Exchange

Patent’s File Wrapper (PFW) - Moving from electronic image based applications (IFW) to electronic text based applications (PFW)

1 “pdf” is an internationally accepted standard format for electronic documents.

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