By Kevin E. Noonan —

On Tuesday, U.S. Patent Commissioner John Doll (at right) touted several initiatives being pursued in the U.S. Patent and Trademark Office to reduce the backlog of pending cases (see "Lunch with Commissioner Doll").  He also said he (and the rest of PTO management) welcomed whatever creative ideas that the patent community has to solve the Office’s backlog problem.  Since we at Patent Docs believe Commissioner Doll is sincere (although occasionally misguided) in his passion for improving the U.S. patent system, we thought about his invitation seriously and have the following recommendations, based in part on what the Commissioner said "was working" among the current Patent Office initiatives.

This proposal is based on many of the current initiatives in the office, including accelerated examination and efforts to promote examiner interviews as well as disclosure of "the best" prior art known to the Office and applicants.  In this proposal, the Office would offer applicants an incentive that for every application that an applicant abandons, another, related application would receive accelerated examination.  The related application receiving this benefit would be of applicant’s choosing, but would be limited to applications in which the remaining issues were scope issues (i.e., generally related to issues arising under 35 U.S.C. § 112) rather than prior art issues (i.e., relating to rejections under § 102 or § 103).  Applicants could make an application eligible for acceptance into the accelerated program by filing an amendment that would overcome any pending § 102 or § 103-related grounds of rejection.  In addition, for any application undergoing accelerated examination, any claims subject to restriction and eligible for rejoinder would be rejoined for examination.  Upon notice of accelerated examination, applicants would have to certify that they had performed a search, under PTO guidelines, and had submitted all art uncovered in the search or cited in any corresponding foreign patent office.  However, there would be no obligation for the applicant to characterize the references, and a presumption would arise that a search conducted under PTO guidelines satisfied the provisions of Rule 56.  There would be no time limitation on this form of accelerated examination, unlike the program currently in place that has a 12-month "filing to decision" goal; the applications in this program would be treated like reexaminations or under the former "petition to make special" practice (they would be treated with special dispatch and advance to the head of the examiner’s "to do" list).  Extensions of time to respond would be limited to good cause shown or unavoidable delay.  Applicants opting for this program would be entitled to an examiner interview after submitting the art, either with the primary examiner or a SPE having signatory authority, and with the goal of arriving at patentable subject matter as a result of the interview.

The benefits of the program are that at least one application would be abandoned for each application in the program; even if an applicant were to obtain a patent and file a continuation, the Office would have the benefit of reducing the backlog by two cases for every additional new one (the abandoned application plus the granted patent counting as two dispositions).  Moreover, presuming a fair percentage of the cases in the program would have divisional applications (the PTO’s rationale for the now-enjoined claims and continuation rules showed that about 40% of the "rework" applications were divisionals), there may be more than two dispositions for each additional continuation.  Assuming even 10% of the applications in the backlog would participate in the program, the overall reduction in the number of backlog cases could be on the order of 25%.  This trend could be accelerated by targeting applicants with large pending portfolios.  For example, IBM has a total of 23,731 published applications in the PAIR system, and Microsoft has another 12,507 applications.  The Office is certainly aware of other entities "responsible" for a large proportion of the backlog, and such entities could be reminded of the offer in all Office Actions or other Office correspondence they receive.  (The Office would have to make a determination whether it was worthwhile to include the offer to all applicants in all papers sent by the Office.)

The program could also work for small entities, although it might be prudent to waive the requirement for abandoning related applications for these applicants.  This is because these applicants typically have far fewer applications contributing to the backlog, and accelerated examination might provide them with sufficient protection that related applications would no longer be necessary.  It is expected that the program would have little effect on "new technology" application filings.

Unlike the now-enjoined new rules, the benefits of this proposal is that they are voluntary and so do not constitute a taking or other encroachment on an applicant’s rights or expectations and as such should be less exposed to judicial challenge.  For applicants, the proposal offers the benefits of reduced prosecution costs, reduced pendency times, and more focused PTO examination.  The Office benefits by reducing the backlog as well as having a larger percentage of applicants being involved in examiner interviews; Commissioner Doll reported that both examiners and applicants thought the interview process was the greatest benefit of the current accelerated examination program.  And the public benefits because the examiner will have had the "best" art available for examination and the best understanding of the invention through the interview process, thereby ensuring maintenance of high patent quality.  Transparency concerns could be met as they are now, by the requirement that the applicant provide an interview summary as part of any response filed after the interview.

Commissioner Doll expressed a fairly negative view about blogs and bloggers, with perhaps some justification in view of the penchant for some to use their blogs as tools to criticize or "vent" their frustrations with the Office.  (It is likely denizens of the Office have the same needs, which are occasionally revealed in the commentary sections of some patent law blogs.)  However, blogs and bloggers are also people invested in the patent process, and who take the time to make proposals like this one as part of the patent community’s effort to contribute to solving the problems that actually exist in the U.S. patent system.  We hope that Commissioner Doll (or a minion) takes the time to think about what we propose here, at least as a starting place for addressing the very real problems that Mr. Doll has taken so much time and effort to emphasize in his formal dealings with the public.  There are ideas out here, Commissioner Doll; is anyone in the Office listening?

For additional information on this and other related topics, please see Patent Docs‘ "Post GSK: Where Do We Go from Here?" series:

• "Readers Propose Changes," January 8, 2008
• "Accelerated Examination," November 13, 2007
• "Deferred Examination," November 12, 2007
• "Co-owned, Co-pending Applications," November 11, 2007
• "Increased Fees for Continuations," November 8, 2007
• "Regional Patent Offices," November 7, 2007
• "Tailoring Protection and Examination," November 6, 2007
• "Annuities," November 1, 2007