The US Patent and Trademark Office issued its “21st Century Strategic Plan” earlier this month, in which it outlined plans to revamp the patenting process.
Under the plan — which requires approval of the president’s 2003 budget and significant legislation — the PTO has set a goal of reducing the average time of processing a patent to 18 months by 2008. Currently, the total processing time (pendency) takes an average of 28 months, “and if we didn’t do anything it is going to go up to 36 months,” said Richard Maulsbey, the PTO’s director of public affairs. Meanwhile, the office plans to reduce costs by a half billion dollars over the next five years and hire 2,500 fewer examiners than called for in its original 2003 budget.
Does this mean the PTO will renege on its recent promise to hire more biotechnology patent examiners? Not immediately. “We are hiring this fiscal year and will do some more in the next fiscal year,” said Maulsbey, “and many are in the bio area.”
Maulsbey also noted that the plan calls for outsourcing some searches for prior art — previous inventions that would render an invention unpatentable — to foreign patent offices. Assuming this part of the plan is adopted, ”it won’t be necessary to hire as many examiners,” Maulsbey said.
Patent experts reacted with alarm to this proposed change. The shift to fewer examiners and outsourcing “is going to have a deleterious effect” if it is put into place, said Rochelle Seide, a biotechnology patent expert and partner at Baker Botts. “I am not sure how it will work with outsourcing patent searches,” she said, noting that the European Patent Office already outsources prior art searches to the US office.
Craig Kaufman, a partner at the Silicon Valley office of Orrick, Herrington, & Sutcliffe and former associate solicitor at the PTO, added that the proposed decrease in new hires is “puzzling given the increase in applications. If you have more applications and fewer examiners, it seems to me you might end up lengthening pendency rather than decreasing it,” he said.
In the plan, the USPTO said it plans to make up for the loss in manpower by replacing the “labor-intensive paper processing” with “electronic end-to-end processing of both patents and trademarks.” The Office plans to begin “e-Government” operations — i.e., online processing of patents — by October 1, 2003, and make the electronic patent application process fully operational by October 1, 2004.
In the fee arena, a proposed change that would require legislation involves replacing the existing single examination fee with a multi-tiered fee system, in which applicants will be able to have their patent application expedited through a new “rocket docket” option that guarantees processing time of no longer than 12 months, the report said.
This change in fee schedule could benefit biotech and pharmaceutical companies. In biotech and pharma, “you want patents issued as soon as possible,” Seide said. In addition, it could be helpful for genomics tools and other companies that file complex patents, which are then divided into multiple parts. Instead of having the pieces of their original application reviewed serially, companies can pay to get more examind in the same time period, Seide explained.
But the system could also backfire. “I suspect that in practice you’ll end up with most large companies or those with a significant patent position wanting to pay more and get their patents issued, and I wonder whether it won’t simply clog up” the system, Kaufman said.
On a global scale, the Patent Office plans to work with patent offices in Europe and Japan to make it easier for US patent holders to obtain international patent protection and develop a universal electronic patent application, as well as work toward global convergence of patent standards and systems.
One of the suggested changes, which would make the US patent system more like those of other countries, is a feature dubbed “post-grant review.” This feature “sounds suspiciously like a European-type opposition process,” Kaufman noted. “It will meet pretty stiff opposition from the small inventor lobbies.” However, he noted that this option could help small genomics companies by allowing them to challenge a patent of a competitor without having to resort to the costly option of infringement litigation.