Thursday, April 03, 2008

What to do at the USPTO to reduce application backlog, post-Tafas?

Following the demise of the USPTO rules on continuing applications in Tafas v. Dudas, just-n-examiner had a thread on
"what can be done" to resolve the application backlog problem at the USPTO.

One commenter wrote: Now that the EPO is pumping out its EESR'S [initial office actions] soon after each new application arrives, USPTO Exrs can visit the file on and read the EPO's "FAOM" [first action on the merits] IPBiz notes that, while the proposal of copying the work-product of European examiners is intriguing, it does not tell one how the
EPO is able to quickly produce office actions on each new application and the USPTO cannot. A different commenter wrote:
These days, the EPO FAOM (called the EESR opinion) issues with the search report, just a month or two after filing the app.

A different commenter suggested changes to the USPTO "count" system, to alter incentives for examiners:

Currently, Examiners get one count for each FAOM and one count for each disposal (allowance, abandonment, or RCE equivalent). This system rewards Examiners who can stall the resolution of true issues (e.g. with piecemeal rejections) rather than bring the issues to a head. How about revising the system to stop rewarding conduct that merely recirculates applications by revising the count system so that:

1) if a continuation is filed of an application which goes abandoned, don't give the Examiner a count for the abandonment (since obviously the applicant has not "abandoned" pursuing the invention), but he still gets a count for the next FAOM;

2) if an RCE is filed, don't give the Examiner a count for the RCE, but give him one count for the next action on the merits.

To give the Examiner's counts for actions that resolve nothing (abandonment/continuation, forcing a continued examination but not doing any continued examination) seems to just promote resolving nothing.

And to make up for the lost Examiner counts, maybe you could give Examiners two counts for:

3) abandonments that don't result in subsequent continuations;

4) allowances that terminate a family or perhaps a family chain (i.e. no subsequent continuations).

Regarding 3) a killer rejection with killer art would be granted double-count credit. I understand that 4) might be dangerous (prompting Examiners to issue the cases as filed) but perhaps there could be a second review of all first action allowance attempts (or of cases issued without any significant claim amendments)... resulting in loss of counts for the Examiner and/or other actions in the case that errors are determined.


See an April 4 post on patenthawk, which starts with

Ask for employee input - Talk to POPA, and listen. Talk to SPEs, and listen. Survey employees with regard to job satisfaction, pay, benefits, etc. Then, consider this input while making all other decisions.

LBE had noted in June 2007:

Resources should be directed to the examination process itself and management/worker tensions at the USPTO should be addressed.


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