1. John J. Calvert Administrator, Inventor Assistance Program John J. Calvert Administrator, Inventor Assistance Program Patents – Past, Present and Future

2. 2 Presentation Outline  Quick look at university patent history  Proposed three track examination  What’s next in fees?  Examination changes  How long does it take?  Some new initiatives

3. 3 University Patents Before 1984 Total patents Issued – 4736 Top twenty – 2773 58.6% 1984 Total patents issued – 578 Top twenty – 281 48.6% 2008 Total patents issued – 2891 Top twenty – 1324 45.8%

4. 4 University Patents  Total 1984 – 2008  All universities – 53965  Top twenty – 25779  Percentage top twenty/total – 47.7%  Total recorded through 2008  All universities – 58701  Top twenty – 28572  Percentage top twenty/total – 48.7%

5. 5 University Patents  Top five vs. next groups of five

6. 6 What to take away  Top twenty schools still growing  Top five schools growing faster that the next fifteen  More schools are getting patents and are growing at a faster rate that the top twenty

7. 7 Proposed Rules  Missing Parts Practice  Non-provisional application ready for publication File non-provisional ready for publication At least one claim Pay application fee only  Publication at 18 months  12 months to pay examination and search fees plus surcharge  Comment period ended June 1

8. 8 Proposed Rule  Three-Track  Track I Expedited examination By fee (TBD) 4 months to first action; 12 months to final disposition 4 independent claims; 30 total claims No Examination Support Document (ESD)  Track II Current standard process  Track III Delayed examination Non-continuing applications Up to 30 months Request with application fee and surcharge (TBD)

9. 9 What to take away  Track I  Quicker to patent, quicker royalty  Higher costs  Track II  No change  Track III  More time to perfect invention  More time to find solid license relationships

10. 10 Breaking News  Patent Reform  Dead or on life support?  Patent Term Adjustment  Bilski  What now?  New interim guidance for examiners

11. 11 Fee Outlook  USPTO is fee funded  Fees collected are deposited in general fund  Budget allocated on estimated fees  Not funded at level to provide all services  Hiring curtailed  Upgraded computer systems  Speedy prosecution

12. 12 Fee Outlook  Option one  Surcharge Across the board increase  Option two  Fee setting authority granted to USPTO Analysis of service costs by USPTO  Option three  ??

13. 13 Examination  Quality of Examination  Emphasis on quality of examination Move away from post examination quality Better Office Actions in future  Interview Practice  Expanded interview before first action  Encouraged to advance prosecution Better opportunity to educate examiners

14. 14 Time to Issuance  Statistics applications examiners total pendency  TC 1600 Biotech, Organic Chem. 60,836 532 35.1  TC 1700 Chem. and Material Eng 87,136 730 37.4  TC 2100 Comp arch., software & info sec 60,882 629 40.7  TC 2400 Network, Multiplex, Cable & sec 39,669 698 47.7  TC 2600 Communications 127,956 875 42.7  TC 2800 Semicond., Elect., Optics 123,122 1,056 29.7  TC 3600 Trans., Const., Ag, & Elec. Comm. 83,535 766 35.1  TC 3700 Mech. Eng., Manuf. & Products 116,522 744 35.5  USPTO 718,835 6,143 34.6

15. 15 What to take away  Changes are already beginning  Plan to hire aggressively  Set expectations to table statistics

16. 16 Initiatives  Pro Bono  Minneapolis Bar group  Pro Se  Improved communication  Training of examiners  University/Independent inventor  Assistance for independent inventors  Law School clinics  University Tech Transfer Offices

17. 17 Contact Information  John J. Calvert Administrator, Inventor Assistance Program john.calvert@uspto.gov 571-272-4983