1 Patent Operations: Updates & Highlights Austin Intellectual Property Law Association Austin, TX March 23, 2010

2 Topics  Statistics - Filings/Backlog/Pendency  Programs and Recent Initiatives Pendency-related Compact Prosecution & Interviews Programs that expedite prosecution Count System Revisions Quality-related Quality Task Force Revised FY10 Quality Measures

3 Filings, First Actions, & Backlog FY09 Backlog decreased 4.6% Filings decreased 1.7% 1st Actions increased 10%

4 End-of-Year Statistics (FY 2009)  460,924 UPR applications filed  25,575 design applications filed  -1.7% filing decline from 2008  6.3% attrition (9.5% in FY08, 9.9% in FY07)  Patents Staff is composed of the following: 6,242 UPRD examiners 454 Supervisory Patent Examiners 100 Quality Assurance Specialists

5 Patent Pendency – 4 th QTR 2009 compared to 1 st QTR FY 2010 Technology Center Average 1 st Action Pendency (months) 1 4 th Quarter FY09 Average 1 st Action Pendency (months) 1 1st Quarter FY10 Average Total Pendency (months) 2 4 th Quarter FY09 Average Total Pendency (months) 1st Quarter FY Biotechnology and Organic Chemistry Chemical and Materials Engineering Computer Architecture Software Networking, Multiplexing, Cable, and Security – Communications Semiconductor, Electrical, Optical Systems Transportation, Construction, Electronic Commerce Mechanical Engineering, Manufacturing and Products UPR Total “Average 1 st action pendency” is the average age from filing to first action for a newly-filed application. 2 “Average total pendency” is the average age from filing to issue or abandonment of a newly-filed application.

6 Mock-up of the Patents Dashboard Jun-09Jul-09Aug-09Sep-09 Oct-09Nov-09 Total UPR Filings41,56937,91035,94439,892 37,66436,244 RCE Filings12,64112,47911,461 11,597 11,165 11,282 2nd and subsequent RCE Filings 3,3503,4493,0903,276 3,238 3,470 % RCE of Total30.4%32.9%31.9%29.1% 29.6%31.1% UPR Allowance rate40.6%40.3%40.4%41.3% 43.3% Allowance rate without RCE abandonments57.8%57.3%57.2%57.3% 56.4%57.4% Number of Allowances136,238150,230165,602189,120 23,461 42,911 UPR Backlog733, ,273725,833718, ,835726,098 RCE Backlog17,20919,66619,55514,620 17,76318,114 RCE to FAOM (months) Months of Inventory UPR Pendency FA (months) Total Pendency (RCE reset) Total Pendency (No RCE reset) UPR Examiner Staff6,1576,2086,1706,145 6,1266,107 UPR Backlog per examiner Design Filings2,1912,2931,9542,290 2,3152,133 Design Backlog18,26218,59017,76117,126 17,409 17,297

7 Pendency-Related Initiatives n Putting the focus back on Compact Prosecution n Emphasizing complete, high-quality first actions n Reducing rework by avoiding unnecessary RCEs and avoiding office actions that do not advance prosecution

8 Actions Per Disposal

9 RCE and Continuations Percentage of Total UPR Filings

10 Pendency-Related Initiatives: Examiner and SPE Training  Compact Prosecution Training- Completed in early FY2010. Focused on claim interpretation, proper search, clear and complete first Office actions, early indication of allowable subject matter, telephone interview practice, proper final rejection practice (including treatment of applicant’s arguments), and after-final practice.  Interview Training- Completed in late FY2009. Focused on conducting effective interviews. Encouraged examiners to hold interviews earlier in prosecution so that issues and potentially allowable subject matter can be identified early in the examination process. Also encouraged examiners to hold interviews later in prosecution to reduce unnecessary RCE filings. Training Materials on Web site:

11 What can practitioners do to help regarding interviews? Tips for an effective interview -Submit an agenda using PTOL-413A to outline the purpose and intent of the interview; -Be prepared to discuss the issues raised in the Office action; and -Propose claim amendments to overcome applied prior art rejections

12 What can practitioners do to help regarding After-Final interviews?  Normally, one interview after final rejection is permitted if allowance or clarification for appeal can be accomplished with only nominal further consideration. (See MPEP ).  The intended purpose and content of the interview should be briefly presented, preferably in writing using PTOL-413A.  An after-final interview should not be held merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration.

13 What can practitioners do to help advance prosecution?  Amend claims clearly to overcome prior art and any rejections under 35 U.S.C. 112, second paragraph.  Amend claims to include allowable subject matter as indicated by the examiner.  Point out support for claim amendments.  Argue limitations that are in the claims.

14 What can practitioners do get things moving After-Final ?  Request an after-final interview  File a petition under 37 CFR if finality of Office action is improper  File a pre-appeal brief conference request  File a notice of appeal and appeal brief  File an RCE with an amendment to further distinguish the claims over the prior art

15 Programs to expedite prosecution and reduce pendency First Action Interview (FAI) program expansion Accelerated Examination (AE) program Patent Prosecution Highway (PPH) Green Tech application program

16 First Action Interview Pilot Program Promote personal interviews prior to issuance of a first Office action on the merits Advance examination of applications once taken up in turn Facilitate resolution of issues for timely disposition Program Overview Applicant must request participation After receipt of a pre-interview communication, an interview is held prior to a First Action on the merits Applications in the original pilot had a six-fold First Action Allowance rate compared to cases outside of the pilot »Original pilot included two technology areas – computer networks and database

17 First Action Interview Pilot Program: Statistics as of January 12, Applicants have joined the pilot program 416 Pre-interview Communications (PFA OA) have been mailed 335 Interviews have been conducted 282 First Action Interview Office Actions have been mailed 163 Allowances Areas in expansion  1610, 1795, 2160 (in original pilot), 2440/50 (in original pilot), 2617, 2811+, 3670 and Eligibility and other information is available at:

18 Accelerated Examination (AE) Program Consider the Accelerated Examination (AE) Program See MPEP (a) for the requirements and further information. Additional information is also available on the USPTO’s Web site at

19 Revisions to the Examiner Count System: Director’s Task Force Objectives n Provide examiners with incentives to: –Address issues early in the examination process –Reach out to applicants n Reduce rework n Deliver net gain for all stakeholders n Improve working conditions n Develop initial plan and institute an iterative process for improvement n Do no harm

20 Revisions to the Examiner Count System: Overview of Proposed Package n Combination of count system changes and more time for examiners –More time overall (increase in Hrs/BD) –More time for FAOM (shift in counts so FAOMs get more credit) –Provide time for examiner-initiated interviews –Diminish credit for RCEs –Consistent credit for transferred or “inherited” amendments n Revised Production Award Program n Process changes –Increase work credit certainty for examiners –Increase fairness to applicants by implementing a more disciplined examination order –Balance the load on IT systems by encouraging earlier submission and review of work n Improved working conditions –Reduce examiner reluctance to allow applications –Shift resources from a focus on Examiner Recertification to front-end quality improvements

21 Revisions to the Examiner Count System: Anticipated Results n Set the foundation for long-term pendency improvements n Focus on quality work up front by increasing production credit for first action and by providing more overall examining time –Increase in customer satisfaction n Identify allowable subject matter earlier in prosecution –Increase in examiner-initiated interviews –Decrease in actions per disposal due to compact prosecution n Rebalance incentives both internally and externally resulting in decreased rework n Support examiner ownership of transferred or inherited cases by providing consistency in production credit n Increase examiner morale leading to reduced attrition

22 Quality-Related Initiatives n Quality Task Force n Revised FY10 Quality Measures n Examiner Quality Initiatives

23 QUALITY TASK FORCE Purpose: To identify the most important and accurate indicia essential for a quality patent, and to implement measures to gauge this indicia and improve patent quality.

24 Quality Task Force Next Steps  Federal Register Notice Requesting Public Comment (Published December 9 th, 2009)  Gather/Evaluate Previous Quality Studies  Public Roundtable

25 Proposed FY10 Quality Measures Revised Metrics 1 New Final Rejection/Allowance Compliance Rate metric Stand alone Non-Final In-Process Review (IPR) Compliance Rate metric Modified Sample Design Reduced volume of end-process (allowance) reviews Increased sampling emphasis on Non-Final Action In- Process Reviews 1 Metrics through FY09: Allowance Compliance Rate and combined Non-Final and Final Action In-Process Compliance Rate

26 Proposed FY10 Quality Measures n Final Rejection/Allowance metric focuses on the correctness of the examiners’ overall determination concerning the patentability of the claims in the decision to finally reject or allow claims.  Stand alone Non-Final IPR metric and increased sampling emphasis focuses on the quality of examination early in prosecution rather than on the end product.  Reduction in the volume of end-process reviews increases OPQA resources available to the Technology Centers to assist with training and quality improvement initiatives.  Redirects resources to improve the quality of work products produced rather than checking the end product

27 FY09 and FY10 sample design: Comparison of relative proportions of action types sampled

28 Definitions of Metrics Final Action/Allowance Compliance Rate The Final Rejection/Allowance Compliance Rate is determined on the basis of a review of a randomly selected sample of allowed applications and finally rejected applications. The compliance rate is the percentage of reviewed applications in which no deficiency is found with respect to the examiners’ final determination concerning the patentability of the claims. An allowed application is considered to be compliant if none of the allowed claims are found to be unpatentable. Finally rejected applications are considered to be compliant if they are free of "in-process examination deficiencies" or IPEDs, which are instances of clear error, as defined by the examiners' performance appraisal plan (PAP), that have a significant adverse impact on the ability of applicant to advance the prosecution on the merits of the application.

29 Definitions of Metrics Non-Final In-Process Compliance Rate The Non-Final In-Process Compliance Rate is determined on the basis of a review of a randomly-selected sample of allowed applications. The percent of non-final actions reviewed in which no examination deficiency is found. Examination deficiencies, which are termed "in-process examination deficiencies" (or IPEDs), are instances of clear error, as defined by the examiners' performance appraisal plan (PAP), that have a significant adverse impact on the ability of applicant to advance the prosecution on the merits of the application.

30 Quality Initiatives throughout the Corps Recapture resources from OPQA to provide training/support Recapture resources from the PTA Focus on outliers (Using QIR data) in areas such as multiple non-finals, multiple finals, and high RCE filings Improve the TC’s classification/transfer process by providing training and re-focus on proper classification Corps-wide 101 training Providing Examiner Interview/Negotiation Training Management Skills Enhancement

31 Quality Initiatives throughout the Corps: Search Training Provide training and enforcement of text and classification searching Peer-to-Peer Search Strategy Training – Each SPE designated one outstanding searcher from among their employees One-on-One Patent Search Information Exchange – for all confirmed errors based on newly found art, the reviewer will meet with the examiner to explain the search used to find the prior art and evaluate the search actually conducted by the examiner Developed SPE Survey for assessing the search training needs for each art unit

32 Thank You Charles Eloshway Patent Attorney Office of External Affairs USPTO