Monday, September 26, 2005

More on patent reform issues

Ronald Stern, president of the Patent Office Professional Association, says many examiners are frustrated by production goals that give them only 20 hours on average to examine an application for a new invention. These goals have not changed since 1976, despite the increasing complexity of patent applications.

"You cannot increase the quality of examination without providing examiners the necessary time to do the job," he says.

As a separate matter, it may be that patent examiners are working unpaid overtime to keep up with output requirements. From
"Both my family and professional lives are suffering severely" from working many hours of unpaid overtime to maintain high production, the employee said.

Litigation is also an issue in patent reform. "Today, hundreds of patent infringement cases are pending against computer software and hardware companies, costing the industry hundreds of millions of dollars each year," says Emery Simon, counsel for the Business Software Alliance. "Left unchecked, these practices stand to disrupt the activities of true innovators, and impede their ability to deliver products and services to consumers."

This information came from an article by Kent Hoover running in South Florida BizJournals. There is a table therein giving patent grant data for the year 2004 as: 382,139 applications filed, 181,302 grants, for a "grant rate" of 47%. Distinct information on the grant rate issue appears in "Things are not always what they seem," in the October 2005 issue of Intellectual Property Today.

from I/P Updates (Sept. 26, 2005)-->

The U.S. Government Accountability Office ("GAO") has published "Testimony Before the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, House of Representatives" which summarizes the results of its Report of GAO-05-1008T entitled "Improvements Needed to Better Manage Patent Office Automation and Address Workforce Challenges." Their conclusions include that the

USPTO Continues to Pursue a Fully Automated Patent Process, but Has Not Effectively Managed its Strategy for Achieving This Capability.
USPTO Lacks Essential Information Technology Investment Management Processes to Support Its Patent Automation.
USPTO Has Taken Steps to Help Attract and Retain a Qualified Patent Examiner Workforce, but Long-Term Success Is Uncertain.
USPTO Faces Long-Standing Human Capital Challenges that Could Undermine Its Recruiting and Retention Efforts.
USPTO Has Made Greater Progress on Strategic Plan Initiatives that Enhance the Agency’s Capability Rather than Productivity and Agility

Of relevance is text at

Faulty Patent Application Routing Delays Action

Misclassification by the Office of Initial Patent Examination (OIPE) using the electronic Application Routing Tool (ART) is delaying action on newly filed patent applications by routing them to the wrong art units and/or technology centers (TCs). This is causing applications to languish in USPTO cyberspace for weeks, months or sometimes even a year or more. This problem is made worse by the lack of an adequate application transfer procedure and an audit trail to identify problem areas. OIPE Director Thomas Koontz reports that the agency is working to correct the initial routing insufficiencies.

The current ART software, a part of the Image File Wrapper system (IFW), does not automatically assign continuation-type cases to the art unit and examiner who worked on the parent application. In addition, the software routes applications to the first art unit in a TC or workgroup that meets its keyword searching criteria. Thus, docketing examiners spend considerable additional time researching classification issues and trying to transfer cases to the right art units. Some docketing examiners have an unfair burden because they must docket the majority of cases for their workgroups, which hold up to ten art units.

Before OIPE started using ART, about a dozen full-time classifiers designated cases to the correct art unit approximately 80 percent of the time. Now that percentage is reversed. Recent research within several biotechnology art units found that, of 109 cases sent to one particular art unit, ART assigned 13.7 percent correctly and 86.2 percent -incorrectly.

Of those incorrectly assigned, 63.3 percent were determined to belong elsewhere after an examiner consulted Patent Application Location and Monitoring (PALM) continuation data that ART had ignored because ART was not designed to access PALM data.

When managers do pick up the eDAN messages, they contain no information on where the case has been, who has reviewed it or why it's bouncing around. The software doesn't allow any history to accompany the reassignment message, obliging the manager to docket blindly or conduct additional research.

A parallel transfer inquiry system exists in the PALM Expo software that allows an examiner to create a record or audit trail. However, only about half of the docketing examiners use this process because it requires double the effort to duplicate the eDAN transfer message in PALM Expo. Even if the docketing examiners send two messages, some examiners only respond to the eDAN message and not the PALM Expo message, thereby negating the recordkeeping system. Creating a separate PALM Expo message consumes extra time because it requires the docketing examiner to write down or memorize the application serial number from eDAN to then key it into the PALM Expo system.

Another article on HR 2795:

A different article has some questionable statements.

-->Whether an inventor uses a patent lawyer, application and filing fees are unavoidable and they have increased substantially over the years. [?]

"The fees have gone up because the number of patent applications has gone up, and it's another way for the patent office to make money," said Schultz.[?] Schultz, a Swiss native, has worked in the printing industry for 60 years and holds a number of patents, one for a printing cylinder.

-->"An important thing to remember is that The Patent and Trademark office is entirely fee-funded," said Richard Maulsby, director of the agency's public affairs.
[No mention of fee diversion!]

-->Lack of reward for company inventors-->

While employed by the Dixie Cup Co., Schultz came up with the process for manufacturing the Riddle Cup, where individual cups could be imprinted with a different riddle as they came off the production line. He said the company made $40 million in sales off his process. His reward? A hundred dollar check and letters of congratulation from the executives. "When you work for a company, they own your ideas."

-->Many inventors believe the patent filing process is not inventor friendly. "Before you can file for a patent, you have to file for the patent cooperation treaty (PCT), [?] then you go into the queue and then you file individually in all the countries," said William Kurt Feick of New Canaan. Feick is an international manufacturer of wheelbarrows with manufacturing plants in China. His most recent patent was for a wheelbarrow bumper.

-->The U.S. Patent Office has a backlog of 600,000 patents, with another 300,000 filed every year. In his testimony to Congress, John Dudas, under secretary of commerce for intellectual property and Director of the U.S. Patent and Trademark Office Jon Dudas, said the office will hire 940 new patent examiners by the end of the year, which represents a 25 percent increase in the patent examining
staff. The agency is planning to hire 1,000 patent examiners a year between 2006 and 2011.

**Separately, a new procedure at the USPTO

There is now docketing for some sort of response to the new "Pre-Appeal Request for Review" which *may* operate to change the deadline for the appeal brief.

Broadband has a good thread on patent reform.

from i/p watch:

Georgetown University Law Professor John R. Thomas, for his part, noted in his testimony that this latest version of patent reform legislation omits many of the recommendations of two landmark patent law reform studies issued by the National Academies Board on Science Technology and Economic Policy (STEP) [NAS] last year and the Federal Trade Commission [FTC] in 2003.


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