Addressing the USPTO Backlog

By Dennis Crouch

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USPTO's Patent Commissioner Peggy Focarino has continued on the path of her predecessor Bob Stoll in focus on reducing the backlog of unexamined patent cases at the USPTO. (Stoll is now a partner at Drinker Biddle in DC). Here, the Office typically defines unexamined cases as those that have not yet received a first action on the merits (FAOM).

In the past year, the number of unexamined applications has dropped by about 10% and is in steady decline. We have not yet seen any measurable decline in the time-to-first-action. However, that is a lagging indicator.  In its forward looking estimates, the USPTO predicts that applications filed today will receive an action within 17 months as opposed to today's average of 23 months. 

The Office is hitting the backlog on multiple fronts, perhaps the two biggest shifts are (1) an increased spending on examination (more examining hours means more new cases being examined) with money coming from AIA fee increases and (2) shifting resources to examining new cases. One such shift has been in reducing the priority level of applications associated with a request for continued examination (RCE). The result has been a steady increase in the backlog of cases that are awaiting examination following an RCE. During the two year time-period shown in my charts, the decrease in the backlog of unexamined cases (82,000 cases) is almost entirely balanced by the combined increase in cases awaiting examination following an RCE (60,000) and cases awaiting decision by the BPAI (11,000).

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While I agree that the USPTO should focus attention on the backlog, I don't believe that the backlog should be the most pressing concern of the Office.  This is especially true since the passage of the AIA and the resulting creation of a fee-based prioritized examination program.  For a $4,800 fee (reduced for small entities), the USPTO will place an application on a fast track examination schedule.  The new reality is that any applicant who cares about fast prosecution can get fast prosecution for a relatively small fee. 

focusing on the backlog 

49 thoughts on “Addressing the USPTO Backlog

  1. Substitute “idea” for “natural law” and the analogy to Frischmann’s analysis becomes clear. Indeed, there is no reason why a “natural law” cannot be an “idea” as Frischmann describes it. A natural law is the articulation of a principle; whether that principle is an infrastructural idea turns on its characteristics, not its origins. In Prometheus, the Court, with Justice Breyer authoring the unanimous decision, held that the patent claimed the natural law itself and not an application of that law. The Court held that the the patent claims did not “add enough to their statements of the correlations . . . to qualify as patent-eligible processes that apply” those correlations (slip op. 8). The “administering” and “determining” steps, in the Court’s view, comprised “well-understood, routine, conventional activity already engaged in by the scientific community” and so were “not sufficient to transform unpatentable natural correlations into patentable application of those regularities” (slip op. 11). Or, in Frischmann’s terms, the patent claims did not amount to an implementation of an idea; they claimed the idea itself.

  2. Now that the patent office’s Detroit satellite is scheduled to open — and 2 additional satellite locations are reportedly in the works — hopefully that will help cut into the backlog. Though it’s true that the introduction of the fee-based prioritization program reduces the urgency of the backlog situation, nevertheless I think that even 20 months is an embarrassingly long time to wait for a first action.

  3. I think there is something to that. I could be wrong here, but I swear that some examiners looked at the assignee, and if they were a large company with a lot of patent applications, forced a first RCE, knowing that the first RCE was usually pre-authorized.

    I have had several instances where we came to an informal agreement, where the examiner said that if I filed an RCE with the agreed upon claims, that he would probably allow them. And, sure enough, within short weeks of filing the RCE, voile, a Notice of Allowance.

    And, yes, this was under the old count system, when examiners were being given a pretty good incentive to force RCEs.

  4. Which would seem to be a good argument for just getting on with it.

    The position I am most often in, when filing an RCE, is that the examiner has cited prior art, and I have narrowed or otherwise amended the claims to overcome the cited prior art. This means in many cases that his new search is going to concentrate on adding references to the rejection, either moving from a 102 to a 103, or as secondary, etc. 103 references. In either case though, he is building on the references he utilized in previous rejections. Or, he is going to allow at least some of the claims.

  5. Now, since RCE pendency is going up sharply, the USPTO’s response is to greatly increase the cost of RCEs (in their newly proposed fees).

  6. I tried to get through to the correct Fax # and couldn’t seem to get through, so I mailed it to the correct Box. Now I’ll just mail it again so you’ll get it today and Tomorrow!

  7. I wonder if the RCE stats would be even worse if we looked only at RCEs with substantive claim amendments.

    I’ve had a number of cases quickly re-allowed after RCEs necessitated by a foreign counterpart case throwing up new references at the wrong time.

  8. Totally agree. Spacing examination out over years has got to have a major impact on efficiency, worsening the overall problem. It is good that Dennis is pointing this out.

    Imagine if you would, that payment of $4800 only got you a faster FOM but no guarantee of any better service thereafter. The PTO could issue the FOM, pocket the money, and then send the application to the end of the line with all other applications for subsequent processing. Now that would not only be inefficient, it would be a fraud.

    The fact that the fast track program includes one RCE is telling. It says an awful lot, actually. It says that a normal prosecution WILL include one RCE.

    Thus, disrupting normal prosecution after filing a first RCE is in fact simply disrupting normal prosecution. That has got to stop.

    PTO: Suspend prosecution for non fast track cases, if you must, but only after the second RCE.

  9. OMG, I agree with 6! Someone bring me the smelling salts!

    He’s got it in one. It’s just moving the deckchairs on the Titanic.

  10. But having a pretty and nearly empty lobby has better eye-candy effect for the congressmen, senators and the media.

    Or are you thinking that the Office makes its decisions not based on public perception?

  11. For all Peggy’s strengths, this is focusing on the wrong thing.

    The issue is getting patents (or abandonments) out the back of the Patent Office, not getting everybody out of the lobby and into an ever-more-crowded and cluttered waiting room. That just makes everything less efficient.

  12. You are right, the pass the buck mentality is part the problem…more work in preparation and examination is required for more complex inventions, yet there is little to no difference in the fees at the PTO. The less complex inventions subsidize the more complex.

  13. Used only one IDS for the two, and I still have a real life Patent Grant, fake of course, no foreign license Granted. I was told to tear it up so they could File it in another country. But it looks real. And the other Patent, well lets say someone broke a federal law to add something that they claim is their embodiment, when in fact it is an exact copy of one of “MY Drawings” they never got LOLOLOLOL. It still generated a lot of fake Paperwork, so they really didn’t save a Tree.

  14. Did you get paid double to file two inventions in one applicatoin? If not, you’re getting ripped off.

    A pass the buck mentality will not be helpful. In fact, that’s part of the problem.

  15. Did you get paid double to file two inventions in one applicatoin? If not, you’re getting ripped off.

  16. 1. So if you’re running 3 cases with the same claims, it’s the same counts as running one case with all 3 independent claims? I think not. Prioritized exam has been in the works since way before AIA or even the count changes.

    2. Pure “the Office never misses the point BS”. If Examiners were always right, then you wouldn’t be blowing up the BPAI docket with your broadest unreasonable interpretations.

    Re restrictions: See 1.

  17. The one’s I’ve seen as also improper. But just as the office had hoped when it started the improper restriction requirement CLE’s for examiners, we calculated that it would cost the client more to protest and traverse than to file continuations/divisionals.

  18. AI I just found a special I think you’ll like:

    link to youtube.com

    In episode 3 you’ll note what happens when a scientist comes face to face with the metaphorical use of scientific terms. It just struck me how pertinent it was to our little conversation the other day. In the homeopathic world you’ve got it all, confusion about “quantum theory” and “energy” and you’ve got people that know that what they’re stating is nonsense but insist on using the terms anyway because “science hijacked the terms”.

  19. OK a couple of things:
    I’m a primary examiner in biology area, 7+ years on the job. Thoughts here are my own insight, not a reflection of policy or anything like that.

    1) The shift is due to the change in the examiner count system. If I recall correctly, that started in 2009 (but I could be off a year). My point is it predates the AIA… the new count system (how examiners are credited for their work) was the result of a negotiation between management and the union, and upper management was under a lot of pressure from Congress to reduce the backlog. Did they change the incentives to prioritize new cases instead of RCEs? Absolutely. But at the time there was no AIA, and it was not clear at all that such a bill would pass. I’ll remind you all that the AIA was a long multi-year effort, and no one would have bet on its actual passage or actual form. So saying that the shift to examining new cases instead of RCEs was a mistake because the AIA allows for Track 1 examination ignores that the decision to shift predates the AIA.

    2) As it was explained to examiners, the shift was partly to provide incentives to both parties to reach allowable subject matter early. Applicants win by getting an allowance (or going to the board) early, and the incentives for examiners to “force” an RCE actually changed with the new count system. Examiners get less credit for working on an RCE, so they have an incentive to move to allowance, Board, or abandonment earlier on.

    Want an allowance? Then present claims with allowable subject matter early in prosecution. If the claim scope is not what your client wants, take what is allowable and battle out the broader scope in a continuing application.
    Think the examiner has made an error? File a brief and go to the board.
    Really think there’s nothing patentable in your case, based on a non-final and a final? Abandon.

    Oh and by the way doing a restriction gets the examiner no credit. Examiner gets credit for doing a first action, not a restriction.

  20. The gander of restriction practice should follow the use of divergent prior art in the goose of KSR inspired PHOSITA.

    If you are going to attempt to pull wildly divergent art based on key words together, then you cannot be allowed to restrict because the art group label the Office creates is one digit apart.

  21. The restrictions I have seen in the last 18 months or are about 95% improper. We have decided to let no improper restriction go untraversed, and when not withdrawn upon traversal, they are petitioned. We have not lost a petition yet and have had all these restrictions withdrawn, often over the protestations of the examiner.

    I urge you all to become familiar with the requirements for a proper restriction in MPEP 800. The Office must be held to follow their own rules.

  22. Easy answer, Attorney’s and the USPTO would never allow that … back and forth prosecution is clearly a money game that benefit both parties.

    All I was saying is that its an indicator of art and the path of prosecution, not the end all be all of prosecution. What is wrong with getting that indicator after a year of filing (versus the present 3).

    Time shifting is not that big of a deal, arrives at the same end point, just in a different manner with a small benefit to those that want earlier patentability indicators.

  23. “It should be written right there in the record, easy to read.”

    Oh yes, my thoughts on all 80 tagged documents and all 10000 documents I searched, as well as all hundred paragraphs in the reference I applied in addition to all my thoughts on his arguments/stuff in interviews are usually laid out all nice and neat in my 3 page OA.

    /facepalm

    “Still further, junior examiners become senior examiners in that long wait time,”

    That is about the only good thing that can happen. The biases will probably remain, they stick around far longer than a year.

    oh and /facepalm again for the rest

  24. >>>The new reality is that any applicant who cares about fast prosecution can get fast prosecution for a relatively small fee. <<<

    With the caveat that the USPTO will accept a maximum of only 10,000 of these per fiscal year.

  25. While the shift of the delay to patenting is noted, on average a First action provides much more information to everybody involved versus a RCE review.

    At an RCE stage some important prior art has been cited, prosecution course has been directed, and everybody’s position have been established to a certain degree.

    In a first action, prior art is being cited and you can valuate the course of prosecution at an earlier date. In other words, provide initial information regarding patentability earlier even at the cost of delay at an RCE stage. I think there is a benefit to this even if slight and marginally a reason for “shifting the deck chairs” or “Robbing Peter to pay Paul”.

  26. Jules, I think the bigger issue is that new attorneys and perhaps new examiners have to take up a case they are totally unfamiliar with. From my own experience, one can at times respond to an action in a case one is familiar with in a few minutes. However, when its an entirely new to a case, one has to review the entire file history, read the specification and prior art asserted, and perhaps talk to the client and engineers, etc., etc., etc.

    Now all that takes time and is inefficient as all get out.

    It makes no sense at all to disrupt patent prosecution once it is underway, especially given the definite risk of changing examiners and attorneys. No sense at all.

  27. Dude peter is a very rich man to still be getting robbed after all these years people have been robbing him to pay paul.

  28. Why, it accomplishes letting the PTO pretend it is doing something right!

    How could you not have noticed that bad?

  29. “Still further, junior examiners become senior examiners in that long wait time, thereby having more authority to allow the case without making unreasonable rejections to appease others.”

    Careful there, Examiner Jules. You’re going to have Mooney denying that any unreasonable rejections are written by junior examiners to appease others. He’ll be demanding serial numbers.

    Of course, when he’s given some serial numbers, he’ll put on his skirt and track shoes and run away. Or he’ll cite the latest issued “giant computer brain” patent. Whichever.

  30. fish says: “The longer the delay to the examination of the RCE the more likely the agreement will not be quickly reached.”

    Longer delay = not quicker. Got it…

    Further, I disagree with the premise that examiners and attorneys are less likely to “remember their thinking”. It should be written right there in the record, easy to read.

    If anything, the extra time could be good for the minds to clear, and thereby remove any unreasonable bias. Still further, junior examiners become senior examiners in that long wait time, thereby having more authority to allow the case without making unreasonable rejections to appease others. Budgets change, and people reassess whether it’s worth it to continue a fight.

    The list of benefits could go on. This issue about people not remembering their thinking is bogus.

    Then some people go on to blame it on restrictions. Excuse me, but I don’t see the correlation. You’re smart people, so I am sure you should be able to make the case without conclusory statements.

    It sounds to me like people are just complaining about the things that bother them.

  31. Making an arguably larger problem at that. Some of my small clients PREFER the long pendency because it allows them to defer costs on prosecution.

    So this removes deferred prosecution for those preferring it, increases inefficiency in examination, and accomplishes what exactly?

  32. Dennis is right, of course. If the folks need prioritized examination, there is a way of obtaining it after the AIA.

    Deferring RCEs disrupts normal workflow of both examiners and attorneys. That has to be self evident. Long delays between bursts of prosecution can result in both new examiners and new attorneys on a case. Now, that tends to maximize inefficiency, not reduce it.

  33. I think it’s mostly the restriction requirement practice increase. Probably a bit of decrease in filing as well though with the bad economic times, and there are some additional examiners now.

  34. Look at those deck chairs a shiftin’!

    “Is the backlog decreasing because the number of applications filed decreased?”:

    Maybe you didn’t hear, the office is letting RCE’s go unexaminer longer so they can do new cases. Basically they’re just moving the deck chairs around to pretend that something is happening on this front while in reality of course it is just making another problem.

  35. The longer the delay to the examination of the RCE the more likely the agreement will not be quickly reached. This is because the longer delay means that the examiner and the applicant are less likely to remember their prior thinking and are more likely to change their minds. It also means that it is more likely that the examiner and/or the working attorney will be replaced.

  36. So now you only get half an examination, and that may consist of a restriction requirement? The old way of just waiting your turn is better, especially when combined with the availability of the prioritized examination option.

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