When Considering PTO Reform, Look to KIPO For Clues
Earlier in the month, The US Patent Policy Advisory Committee issued its 2008 report that explored ways to tackle various quality and pendency issues affecting the PTO. The report concluded that application backlog "reached truly unacceptable levels in 2008."
Not long after, various former PTO officials testified before Congress on the same issues, and referred to the backlog problem as "horrendous."
More recently, The US Chamber of Commerce officially released Recommendations for Consideration by the Incoming Administration Regarding the US Patent and Trademark Office. This report cited the 750,000-application backlog as a significant contributor to "an agency in crisis."
While it is convenient to think of this as a "USPTO problem", the EPO and the JPO have experienced similar backlogs, and other national patent offices (e.g., SIPO) have comparable problems. However, as Joff Wild from the IAM blog puts it, "there is one country that has managed to do something" about application backlogs - the Korean Patent Office (KIPO).
From the most recent annual report (link):
To swiftly and accurately grant rights for the ever-growing number of IP applications, we undertook various measures to drastically improve the efficiency of our examination process. For instance, we adopted the Six Sigma method of management; we expanded our outsourcing of certain examination tasks; and we promoted online and at-home examinations. As a result, by the end of 2007, we succeeded in shortening the first action pendency period for patent examinations to a mere 9.8 months, which means we now have the fastest patent examination service in the world. Moreover, the examination periods were shortened to 5.7 months for trademarks and 5.5 months for designs.
This is quite remarkable, considering that pendencies as recent as 2002 were averaging 22.6 months (and as long as 21 months in 2004).
In addition, KIPO made recent changes in their patent laws to allow "customer-tailored" examination schedules that come in 3 varieties: accelerated, normal, and delayed examination.
Under the "accelerated" examination track, applicants receive office actions within 2-3 months of filing their petition; certain applications should include a prior art search from one of the four authorized organizations (designated by KIPO). Under a "delayed" examination track, applicants can choose the time for KIPO examination ranging from 18 months to 5 years after the filing date. For the "normal" examination track, KIPO claims to keep the average pendency of the first office action to less than 16 months (see here and here).
Of course, nothing here is new to the USPTO. And with the exception of delayed examination, these programs have already been in use by the Office. So the question is, how did KIPO manage to do it, and how can the USPTO replicate their success?
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You will forgive, if I express myself sceptical about KIPO statistics that purport to show mastery of pendency. You will allow me to testify, from personal experience, that the EPO now routinely pumps out first actions within a few months of the filing date, on thousands of bog-standard, "ordinary"-categorized applications that are neither expedited nor deferred. I refer to the opinions on patentability appended to an EPO EESR. What does Joff Wild know about that? What do your readers know about that? What did the Chamber write about that, pray, in its so-called "global" report?
So, Max, what you are saying is the the USPTO is woefully behind the EPO *and* the KIPO.
David French writes:
Deferred examination is one option that will provide temporary respite. People object, but there's nothing wrong with deferred examination; allow examination to be instigated by anyone who makes a request.
But if deferred examination is implemented, the backlog problem will be back to the same level in three or four years if nothing else is done.
Applicants who file an IDS with more than 10 references should earmark the top 10 for review. The issued patent should show an * next to references that the examiner has reviewed. The presumption in favor of validity should only apply in respect of references for which an * is present.
Applicants should designate 10 claims for review. The same * should appear after such claims and the same presumption rules as above should apply to such claims. Perhaps special enlarged examination could be available, at an additional cost.
It's a fallacy that present US patents are subject to complete examination. When an applicant swears-back of prior art within the one-year grace period, the issue of validity is left unresolved. Existing US examination leaves such situations to be dealt with by the court. Greater use should be made of this option.
Of course the EPO does have a unique advantage over all national Patent Offices, namely, it decides on validity, and no court can give it any instructions on that subject. Strikes me that Patent Offices could do a "better" job if they weren't obliged to implement impracticable law imposed by ivory tower judges. Then, of course, the EPO operates in a civil law environment, free from Binding Precedent. Every little helps, when the work coming in the PTO front door is swamping trained resources.
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