2. Boston Patent Law Association Annual Meeting
Drew Hirshfeld Commissioner for Patents, USPTO
December 7, 2017

3. Patents Workforce (as of Oct. 2017)
9,970 total employees
8,152 total Patent Examiners
Of which 186 are Design Examiners

4. Priorities

5. Priorities: Pendency Quality Metrics
Clarity & Correctness Data Capture (Master Review Form, or MRF)
Appeal Statistics
Interview Practice
Examination Time Analysis
Expanded Collaborative Search Pilot (CSP)
Access to Relevant Prior Art
Stakeholder Outreach

6. Pendency Pendency First Action Pendency Total Pendency
Patent Term Adjustment (PTA) Timeframes Compliance

7. FY17 Targets, Results and FY18 Targets
Patent Pendency
FY17 Targets
FY17 Results
FY18 Targets
First Action Pendency
15.5
16.3
15.4
Total Pendency
25.5
24.2 25
Patent Term Adjustment (PTA) Timeframes
14/4/4/4/36
14 months to First Action
N/A
44%
47%

8. Pendency Pendency First Action Pendency Total Pendency
Patent Term Adjustment (PTA) Timeframes Compliance

9. Quality Metrics Quality Metrics
Product indicators, process indicators, and perception indicators
Product indicators – correctness (“statutory compliance”) and clarity
Quality Metrics

10. Clarity & Correctness Data Capture (Master Review Form, or MRF)
Consistently capturing minable data about the correctness and clarity of examiner work
Over 50% more reviews per year
8,000 per year FY15 and prior
Minimum 12,000 anticipated in FY18
Clarity & Correctness Data Capture (Master Review Form, or MRF)

11. Quality Metrics and MRF
FY15 and Prior
FY18
Total # of Reviews
8,000 per year
Minimum 12,000
Potential Data Points per Review
240
330
Scope of Review
Overall Office action compliance
Assessing whether there was a deficiency that would adversely impact advancement of prosecution, e.g., 2+ non-final, re-opening prosecution, etc.
Statutory compliance
Assessing whether examiner made (or should have made) a prima facie case in rejecting any claim under any statute
Reporting Granularity
Individual Technology Centers
Individual Workgroups within each Technology Center

12. Clarity & Correctness Data Capture (Master Review Form, or MRF)
Consistently capturing minable data about the correctness and clarity of examiner work
Over 50% more reviews per year
8,000 per year FY15 and prior
Minimum 12,000 anticipated in FY18
Clarity & Correctness Data Capture (Master Review Form, or MRF)

13. Appeal Statistics − PTAB Results
Overall affirmance rate of 56% for FY17
Additional 12% affirmed-in-part
Tech center rates range from 43% (3700) to 68% (1600)
Appeal Statistics

14. Interview Practice Interview Practice
Advance Patent Prosecution Through Video Conferencing
Simplify your interview request with the online USPTO Automated Interview Request (AIR) form.
12,264 USPTO AIR requests in 2016
Interview Practice

15. Examination Time Analysis
Studying examination goals
Ensuring optimal pendency and quality
Suggested by oversight bodies
Factors to be considered
Examiner and stakeholder feedback
Technology advancements
Cooperative Patent Classification (CPC)
Examination Time Analysis

16. Expanded Collaborative Search Pilot (CSP)
Benefits:
It’s free! Applications are fast tracked, and achieves stronger IP protection across multiple countries
Combined search provides more comprehensive prior art
Average allowances in 8-9 months
Expanded Collaborative Search Pilot (CSP)

17. Access to Relevant Prior Art
Provide examiners with info from related cases as early as possible
Potentially reduces applicant’s burden to comply with duty of disclosure
Completion of initial phase expected end of FY18
Access to Relevant Prior Art

18. Stakeholder Outreach Stakeholder Outreach
Cybersecurity Partnership (Feb. 2017, Sep. 2017)
Biotech Chemical Pharma Customer Partnership (Mar. 2017)
Design Day (Apr. 2017)
TC 1700 Additive Manufacturing Partnership (June 2017)
TCs 3600 & 3700 Mechanical Partnership (June 2017)
TC 2600 Partnership (July 2017)
TC 1600 Partnership (Aug. 2017)
TC 2800 Semiconductor Partnership (Aug. 2017)
TC 3600 Business Methods Customer Partnership (Sep. 2017)
Partnering in Patents (Oct. 2017)
Stakeholder Outreach