Jon Dudas, PTO Director, gave a great luncheon talk at the well attended Town Hall Meeting on Patent Reform held in Chicago. In his speech, he gave a commitment to work toward patent reform measures in Congress. Dudas has worked on Capitol Hill for many years and has strong relationships with key Republican members of Congress. His active support will be critical for any patent legislation.
The big news, however, were his clear statements on non-legislative steps the PTO is undertaking to solve a number of well known problems at the Office. Specifically, Undersecretary Dudas spoke on (i) transparency; (ii) reexaminations; and (iii) appeals. The best aspect of the ideas that Dudas presented is that the solutions can be implemented by the PTO without Congressional action.
(i) Transparency: Dudas is a big believer in the motto: “You cannot improve what you cannot measure.” With that in mind, he is implementing a number of new systems for measuring how well the PTO is doing in terms of both pendency and quality. These include more in-process reviews as well as a reformation of the pendency statistic.
Historically, pendency has been calculated by looking at newly issued patents to determine how long they took to issue. This calculation is obviously backward looking. Now, the PTO is implementing forward looking measures to determine the ‘firepower’ of various technology areas. Specifically, the PTO’s firepower number is an estimate of, given the current backlog and workforce, how long would it take for a patent filed today to issue or be abandoned. This number will be more difficult to calculate, but is necessary if the pendency number is to serve as any basis for improvement at the PTO.
(ii) Reexamination: At the conference, there is quite a bit of discussion on legislative efforts to enact a post-grant reform system through legislation. However, Dudas believes that the reexamination procedures currently available provide a valuable means for improving patent quality of the most important patents (those being litigated). The problem is that the PTO is much too slow in evaluating reexams. Almost half of reexams take over two years and many over four years to complete. In his talk, Dudas gave a commitment to cut pendency of all reexams to two years or less. To ensure quality, Dudas plans to implement a supervisory review process of for all reexams.
(iii) Pre-Brief Appeal Conference: Finally, in an announcement that may save at least $30M in annual attorney fees, Undersecretary Dudas indicated his plans to introduced an opportunity for a pre-brief appeal conference to give the applicant an opportunity to discuss perceived errors by the Examiner in conference with the Examiner and at least one supervisor or SPE. The thought is that this conference may eliminate a good portion of easy cases that are normally decided only after the applicant files a (costly) brief.