Wednesday, January 25, 2006

"Befuddled outrage" at proposed USPTO changes?

from Bruce V. Bigelow, San Diego Union-Tribune:

The first part of the story identifies [obliquely] the backlog of applications at the USPTO:

The number of patents issued by the federal government declined by 11 percent in 2005, the second consecutive year to show a decrease in granted patents.

Yet, the U.S. Patent and Trademark Office says that patent applications increased last year by more than 8 percent.

The disparity represents a mounting backlog of pending patents at the patent office, which has grown to "historic proportions," in the words of Jon W. Dudas, director of the patent office.
[IPBiz note: while there is a backlog of unexamined patent applications at the USPTO, the cited data doesn't actually prove it. It would have been more direct simply to present the numbers of unexamined applications and the anticipated wait in various art groups.]

The article alludes to proposed rule changes without identifying the substance of the proposals:

In a bid to improve the bottleneck, patent officials have embarked on a broad overhaul of the agency's operations, including rule changes intended to streamline the patent process. But the rule changes have already stirred controversy among inventors, patent lawyers and others.

"There's absolutely no question that it's going to be controversial," said Ronald J. Riley of the Professional Inventors Alliance.

"It's a very complex issue, but the bottom line is that the essence of these rule changes may be good for the bureaucracy, but they are not good for innovators and innovation."

While the rules intend to reduce patent examiners' workloads, some patent lawyers said the result seems likely to shift much of that work – and the cost – to applicants.

Peter Zura, a Chicago patent lawyer, characterized the patent community's reaction as "befuddled outrage."

Proposed limits on the practice of filing continuations, which seek additional protections for existing patent applications, has alarmed the biotech, software and electronics industries, Zura said, because it often takes years to develop some inventions.

"I'm concerned. . . . This is a big change," said Chris Steinhardt, a San Diego patent lawyer who is scheduled to discuss the changes this morning at a seminar hosted by the Los Angeles Intellectual Property Law Association. The 9 a.m. session at the Skirball Cultural Center in Los Angeles is the first in a series of nationwide presentations planned by senior patent officials in coming weeks.

La Quinta presentation

Patent officials plan to make similar presentations early next month in Chicago and at La Quinta Resort & Club during the midwinter meeting of the American Intellectual Property Law Association.
The reaction so far has been "interesting," the Commissioner for Patents, John J. Doll said in a recent interview.

"People seem to be leery and skeptical," Doll said, explaining that the agency's road show is part of a broader effort by patent officials to "sit down and explain our reasoning."

In November, the patent office said it issued 165,485 patents in the fiscal year that ended in September – and had received 406,302 patent applications, along with 323,501 applications for trademark registration.

An independent tally prepared by a Delaware research firm, IFI Patent Intelligence, found the number of U.S. patents issued in 2005 was 143,831.

IBM earned more U.S. patents than any other company in 2005, with 2,972, according to IFI's tally. It was the New York company's 13th consecutive year at the top of the list, but it also marked a 9 percent decline from 2004 and was the first time IBM has scored fewer than 3,000 patents since 2001.

IFI found that Qualcomm topped the list of San Diego-based patent recipients, with 200 patents issued to the wireless technology giant in 2005. That was a 29 percent decline from the 283 patents granted to Qualcomm in 2004, IFI said.

In past years, Doll's office has been criticized for issuing a glut of patents for dubious innovations and the agency moved last year to make quality a higher priority in patent applications.

As a result, Doll said, examiners allowed fewer patents last year.

In 2005, for example, the percentage of patent applications that were granted was 58.7 percent, Doll said. In the previous year, the percentage of allowed applications was 62.6.

The proposed rule changes would build on that effort to implement what Doll characterized as quality control measures.

Stiffer regulations
The proposed rule changes would tighten the number of independent claims that will be allowed in each patent application and clamp down on requests for continued examinations, among other things.
The agency says the revised rules should improve the quality of patents that are granted, "making them easier to evaluate, enforce and litigate."

"I can see where they think this is going to help them with a number of reworked applications," said Steinhardt, a partner in the San Diego office of Knobbe Martens Olson & Bear.

But Steinhardt said the proposal also "limits your options and it can drive up the cost significantly for prosecuting these patents."

In a news release, the patent office said that almost one-third of the 355,000 new patent applications filed in 2004 involved inventions that had already been reviewed. The applicants had resubmitted most of those applications with only limited changes to the claims, or sometimes, to seek a fresh review of claims that the patent office had previously rejected.

"While some resubmissions are necessary," the statement said, "addressing them detracts from the agency's ability to examine new patent applications."

The patent office, which six months ago moved into a new headquarters in Arlington, Va., also wants to expand its staff by nearly 25 percent.

Today many patent applications arrive on compact discs that contain millions of pages of data. As a result, the volume and complexity of patent applications have been outpacing the staff's ability to examine them.

The time required for the office to issue a patent, on average, is now close to three years after an application is filed, said Darlene Slaughter, general manager of IFI.

Office 'overwhelmed'
"The patent office is overwhelmed because they don't have enough staff," Slaughter said. Once a patent application is filed, the average time required for a patent to issue is now 29 months, she said.
The patent office has more than 7,000 employees, including some 4,100 examiners, Doll said. The agency hired a record 978 examiners last year, but the patent office still wants to hire 1,000 more examiners this year.

Such monumental staffing increases have prompted patent officials to institute a new training academy at the agency's headquarters so prospective examiners can be trained in a collegiate setting.

"Over half of our new hires this year, over half of the new patent examiners, will go into the electrical arts," Doll said. The category includes a broad array of patents that includes telecommunications and computer-related categories.


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