The Future of Patents and the USPTO AIPLA 2008 Mid-Winter Meeting January 24, 2008 Brian E. Hanlon Deputy Director, Office of Patent Legal Administration

U.S. Patent No. 586,145Hunting Decoy

Topics n Statistical Update – Why FY 2007 was a record- breaking year and Patents Operations Update n Strategic Planning & the Future of the USPTO n On-Going Quality Initiatives and Programs  Fulfilling the goal of continuous improvement n Helpful Practice Tips n Helpful USPTO Contact Information

STATISTICAL UPDATE Why FY 2007 was a Record-Breaking Year and How the USPTO is Progressing

FY 2007 Quality Results n Improving Quality is our Highest Priority 2006 Result2007 Result2008 Goal 90% in process compliance 92.2% in process compliance 92% in process compliance 3.5% allowance error 4% allowance error

Quality

Allowance Error Rate

FY ‘06 419,760 Growth of 9.2% from ‘05 FY ’07 440,617 Growth of 5% from ‘06 UPR Filings

Filings, First Actions, and Backlog

Preliminary End-of-Year Statistics (FY 2007) 440,617 UPR applications filed 26,626 design applications filed 769 reexamination requests filed ( inter and ex parte ) 5% filing growth over % examiner attrition Patents Staff 5,477 examiners 376 Supervisory Patent Examiners 100 Quality Assurance Specialists 56 SPE/trainers for Patent Training Academy

Patent Pendency - End of Year 2007 Technology Center Average 1 st Action Pendency (months) 1 End of Year FY07 Average Total Pendency (months) 2 End of Year FY Biotechnology and Organic Chemistry Chemical and Materials Engineering Computer Architecture Software and Information Security – Communications Semiconductor, Electrical, Optical Systems Transportation, Construction, Electronic Commerce Mechanical Engineering, Manufacturing and Products UPR Total End of Year FY “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.

STRATEGIC PLANNING AND THE FUTURE OF THE USPTO

Patents Strategic Plan Objectives n #1Provide high quality examination of patent applications n #2Improve and integrate existing electronic systems to promote full and electronic patent application processing; implement better/more secure systems n #3 Improve the quality and timeliness of patent examination by exploring a range of approaches to examining applications

A Sample of the Strategic Plan Initiatives n Patent Training Academy n Expand telework & explore establishing regional/remote/local USPTO offices n Explore the development of alternative approaches to examination in collaboration with stakeholders n Peer Review of Published Applications n Accelerated Examination Initiative n First Action Interview Pilot n Design & implement a comprehensive quality system n Examination reform through rule making to focus examination & enhance information exchange n Continued increase of e-filing

Patents Teleworking & Laptop Programs n 1000 examiners participating in the Patents Hoteling Program, since initiated in 2006  Program allows examiners to work from home 4 days per week with USPTO electronic tools  2,314 laptops distributed through PELP  About 75% of eligible examiners n Both programs show production gains in line with increase in total examination time

Examiners At Work

Virtual Art Unit Pilot  13 Examiners and 1 SPE at home  received full PHP equipment  37 examiners remained on USPTO campus  received collaboration tools and training  Random reviews by Office of Patent Quality Assurance n Surveys administered to all examiners in the art unit

Accelerated Examination n Change in practice effective August 25, 2006 n AE petitions decided  262 granted  93 allowances  4 abandonments  84 denied on merits  77 dismissed n 7 pending disposition n First patent, prosecuted in compliance with AE program, issued March 13, 2007 n Guidance provided on the USPTO web site at

First Action Interview Pilot n Initiative still in the planning stages n Applicant requests to participate n Application is NOT taken out of turn n “Preliminary office action” is prepared and mailed to applicant – condensed version of typical first action on the merits n After interview applicant receives copy of action or allowance with entry of proposed amendment n To be piloted in two workgroups of TC 2100

Proposed and Final Rules Changes n Claims and Continuing Applications  Notice of Final Rulemaking  Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications n Information Disclosure Statements  Alternative Claims  Ex Parte Appeal Practice Before the BPAI

Electronic filing New EFS-Web system launched March 2006   allows PDF-based submissions   replaced XML-based system 2005 result: 2.2% of applications filed electronically 2006 goal: 10% of applications filed electronically 2006 result: 14.3% of applications filed electronically FY 2007 results: nearly 50% of applications filed received through EFS-Web; over 1,000,000 (total) follow- on papers and new applications received

Electronic filing n Safe, Simple, Secure n Many corporations, law firms, and independent inventors moving to 100% electronic filing for new applications and follow-on papers.

Electronic Filing

QUALITY Fulfilling the goal of continuous improvement

On-Going Quality Initiatives n Second Pair of Eyes n In Process Reviews n Appeal Specialists n Pre-Appeal Brief Conferences n Appeal Conferences n GS 12 Certification Exam n Primary Examiner Recertification n TC Targeted Areas of Review n Central Reexamination Unit

Second Pair of Eyes n Focuses on reviewing work product at time of allowance n Tool to gather information for creating training modules n May be performed throughout a TC or in specific areas

In Process Reviews n Initiated formally in FY 2003 n Statistically significant randomly selected applications are reviewed n Focus of evaluation:  Whether rejections are proper  Whether a proper rejection has not been made  Evaluate search quality

 Program began July 12, 2005  Extended February 7, 2006  Over 16,000 conferences requested; approximately 15,000 conferences held  During FY ’07, approx. 6,800 conferences held  Decided to proceed to the BPAI over 58% of the time Pre-appeal Brief Conferences

Appeal Conferences n Appeal conference required in every application having a brief (MPEP )  Conferees include:  Examiner  SPE  Appeal Conferee (appeal specialist, another primary or QAS)

GS 12 Certification Exam n Implemented in FY 2004 n Ensures that examiners have up to date knowledge of Office procedures and policies n Confirms through testing that examiners have achieved skills to merit the grant of legal competency and negotiation that occurs with a promotion to GS-13

TC Targeted Areas of Review n Technology Centers focus on areas where greatest area of impact is made n May Include:  Augmenting in-process reviews  Target second pair of eyes review in specific art areas  Target specific actions for review (first office action, finals, etc.)

Central Reexam Unit (CRU) n Initiated in July 2005 to improve quality & timeliness of patent reexaminations n Currently, approximately 1000 total ex parte reexamination proceedings pending in the CRU; approximately 180 inter partes pending in the CRU n CRU hiring plan

Central Reexam Unit (CRU) n 48 Primary Examiners  Varied technical expertise  Reexam experience  Additional legal training  Motivated and collegiate  Quality focused

Helpful Practice Tips

 Use current USPTO prepared forms when one is available.  Do not, however, use an old version of a form. An old version probably does not comply with current Office rules and requirements.  For example, an old version of the oath or declaration form may not have the correct statement regarding the duty to disclose under  How do you know if a form is a current version?  All current USPTO forms are listed, and can be found, at:  Each form indicates its revision or version date in the upper right corner.  Check the version date indicated in the upper right corner of the form you want to use against the version date on the form on the web page to see if you are using a current version.  Many Office forms have been revised so that they are now electronically fillable. Application Preparation Tips: Use USPTO Forms

 Do not alter the language on USPTO forms.  Altering the language might mislead a USPTO official to accept an altered certification or statement that might otherwise not be acceptable.  If a form is altered by a non-USPTO person ( e.g., a practitioner), the USPTO indicia must be removed so it will not appear to be an Office approved form.  Thus, the following must be removed from an altered Office form:  The USPTO form number;  The statement regarding approval;  The OMB number; and  The USPTO collection information in the footer.  See Application Preparation Tips: Avoid Altering USPTO Forms

 Do not use a combined declaration/power of attorney (POA) form:  Do use a separate declaration form and a separate power of attorney form.  Use of a combined form could be a problem if:  A continuation is filed, and it includes a copy of the original declaration/POA but the POA was changed in the parent application (MPEP (c)II, IV);  The assignee is the real client, not the inventor.  The POA should be from whomever is controlling the attorney (the real client).  Who is paying the fees, including the atty fees?  Who is consulted when decisions have to be made? Application Preparation Tips: Separate the POA from the Declaration/Oath

 Note the following rules, and canons from Part 10 of 37 CFR:  § 10.56: Canon 4: A practitioner should preserve the confidences and secrets of a client.  § 10.57: “Confidence” and “Secret” defined, and guidelines given for related actions.  § 10.61: Canon 5: A practitioner should exercise independent professional judgment on behalf of a client.  § 10.68: Avoiding influence by others than the client.  § 10.76: Canon 6: A practitioner should represent a client competently.  § 10.83: Canon 7: A practitioner should represent a client zealously w/i the bounds of the law. Application Preparation Tips: Separate the POA from the Declaration/Oath

 If you do not want your application to be published under 37 CFR 1.211:  Before filing an application, check to see if required threshold condition exists, namely that:  the invention disclosed in the application has not been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication of any application.  If the threshold condition exists, submit an executed USPTO form PTO/SB/35 with the filing of a utility or plant application.  This will ensure compliance with the requirement to conspicuously request non- publication on filing.  NOTE: Non-publication requests submitted after filing are not permitted.  PGPubs will now generally include all preliminary amendments to claims, the abstract, and drawings submitted in time to be included in the publication.  To have the PGPub include information that was not part of the application as filed, submit an appropriate preliminary amendment in compliance with EFS filing requirements and 37 CFR (Note the PreGrant Publication tab when filing.)  New matter is not permitted.  Amendments to the specification require a substitute specification. Pre-Grant Publication Tips: How to Avoid PGPub; Preliminary Amendments Now Included in PGPub

 Provide assignment information.  Provide any assignment information at the time of filing via the transmittal letter or ADS, or during pre-examination processing via an ADS or a Supplemental ADS.  Use accurate spelling of inventor names or assignees.  U se an ADS, or a supplemental ADS, since the data on an ADS is automatically uploaded (thus avoiding transcription errors). Note that the data taken from an ADS is relied upon when there are inconsistencies in the application papers.  Review Information on filing receipt.  Promptly review the filing receipt carefully: check inventor names, title of the invention, benefit claims, the projected publication date, and assignment information.  If you find an error, request correction before export of data for publication. Pre-Grant Publication Tips: Ensure the PGPub has Correct Information

 If you want to have your application re-published to correct an error by applicant under 1.221(a):  remember to submit an electronic copy of the application filed in compliance with EFS requirements, and the appropriate fees. MPEP  If you want to have your application re-published to correct an error by the Office under 1.221(b):  request must be filed within 2 months of the publication and must include a showing of material error(s) made by the Office.  Applicants often file requests that are late ( i.e., after 2 months from publication), and fail to recite material errors, e.g., claims, critical part of spec, all drawings, or benefit claims omitted. MPEP  Do not request republication if error(s) are not material. MPEP Pre-Grant Publication Tips: Re- publication of a PGPub to Correct Errors

 Always Reply to a Notice of Allowance and Fee(s) Due by returning a completed Part B of form PTOL-85:  even if applicant is paying the issue fee and/or publication fee electronically; or  even if an issue fee has been previously paid and another Notice of Allowance and Fee(s) Due is subsequently mailed (which indicates a credit for the prior payment, such that no fees are actually due).  Applicants are required to timely reply to the Notice by submitting a completed Part B of the form PTOL-85, or its equivalent, in order to request the reapplication of the previously paid issue fee, and to update assignee and attorney information. Post Allowance Tips: Always Timely Return PTOL-85 Part B

 Signature requirements for submitted papers:  Papers filed with the Office may not be signed by non- registered personnel, such as assistants, paralegals or legal administrators.  See 37 CFR 10.18(a) and (b).  Make sure that papers submitted for a corrected filing receipt, a supplemental application data sheet (ADS), a request for corrected publication, etc., are signed by:  a registered practitioner, applicant(s), or under certain circumstances, an assignee. General Practice Tips: Who Can Sign Papers Submitted to the Office?

 Do not draft a check to the USPTO for services on an account with insufficient funds.  Do not place a stop payment on a check for USPTO services.  Placing a stop payment on a check to circumvent rules of practice is not appropriate.  Consider replenishing your deposit account at the USPTO and paying a maintenance fee on-line via the Internet.  General Practice Tips: Payment of Fees to the Office

 Before you contact the USPTO ( e.g., USPTO help lines or the examiner) to ask a question:  Try to first do some research to find the answer to the question,  Such as by consulting the current version of the Manual of Patent Examining Procedure (8 th Ed., Rev. 6, September 2007) (MPEP), and the USPTO website.  The MPEP is available at:  Do not ask non-practitioner support staff ( e.g., legal secretaries) to contact the USPTO to discuss the merits of a patent application. General Practice Tips: What Do You Do When You Have a Problem?

Helpful USPTO Contact Information

Technology Center Telephone Contacts  Technology Center  Technology Center  Technology Center  Technology Center  Technology Center  Technology Center  Technology Center  Technology Center Further Information

 General Information Number  or   Central Facsimile Number  Further Information

USPTO Phone Numbers This Organization At This Number Provides Information On: Assignment Recordation Office of Document Services: USPTO Branch of assignments Board of Patent Appeals Status of pending appeals & oral & Interferences (BPAI) hearing requests CD-Rom & DVD Sales Sales of Patent and Trademark electronic information Certificates of Correction How to correct a patent Certification or Office of Document Services: Obtaining certified copies of patents Central Reexam Unit (CRU) Reexaminations located in the CRU Deposit Accounts Office of Finance: How to set up an account & status Electronic Business Center orFax problems with , EFS and PAIR Further Information

USPTO Phone Numbers (cont’d) This Organization At This NumberProvides Information On: Enrollment & Discipline The Patent Practitioner’s exam, registration Fee Questions Office of Finance: Patent & Trademark fees File Information Unit (FIU) Inspecting and copying publicly available files Filing Receipts OIPE - Status, corrections, copies of filing receipts Finance, Office of Fee payment information Foreign Filing License Licensing & Review: Filing in a foreign country Freedom of Information Act Office of the General Law: Questions about FOIA Initial Patent Exam. (OIPE) Applications that are located in OIPE Further Information

USPTO Phone Numbers (cont’d) This Organization At This Number Provides Information On: Inventors Assistance Center General questions on patent process, forms, information packets Licensing & Review Applications relating to national security Maintenance Fees Office of Finance: Payment of maintenance fees Public Search Room Search resources available to the public Patent Publications orApplications that are in the publication cycle Patent Copy Sales How to order patent copies Refunds Office of Finance: How to get a refund Further Information

Office of the Deputy Commissioner for Patent Examination Policy (DCPEP)  Office of Patent Legal Administration (OPLA)  – Legal questions line (policy, rules, MPEP)  – Patent Term Adjustment (PTA) & Extension (PTE)  – Questions relating to Reexamination, Reissue and the Revised Amendment Practice (37 CFR 1.121)  – Questions related to Claims and Continuations Rule package, Benefit claims (35 USC 119(e), 120, 121 and 365(c)) and 35 USC 102(e)  Office of Petitions  – Petitions Help Desk  Office of Patent Cooperation Treaty Legal Administration  – PCT Help Desk Further Information

USPTO Useful Web Links ( )  Helpful Web Pages:  Notices, Recent Patent-Related – a very current list of all Federal Register, Official Gazette and pre-Official Gazette notices, and certain Office memoranda:  Forms Page – current USPTO forms available for use by the Public:  Manual of Patent Examining Procedure (MPEP): Further Information

USPTO Useful Web Links (cont’d)  Mailing Addresses and Mail Stops:  Facsimile Numbers: xs.htm  USPTO Glossary:

Contact Information n Brian E. Hanlon Deputy Director, Office of Patent Legal Administration (OPLA) Phone:

Thank you.