NYTimes.com Article: A Bid to Overcome Patent Backlogs

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A Bid to Overcome Patent Backlogs

September 23, 2002
By SABRA CHARTRAND 




 

In their appropriations committee reports for 2002, both
the House and the Senate made it clear they were not happy
with the Patent and Trademark Office. It was not the first
time, and the patent office's customers have not been happy
with the agency for a while, either. 

In fact, for several years the patent office's basic
functions have had serious problems. It typically takes a
year before an inventor hears a first response to an
application, and then an average of slightly over two years
before a patent is issued (and there are warnings that this
will soon stretch out to three). And there have been
increasingly frequent complaints about the quality of the
patents themselves and doubts about the skills of the
patent examiners. 

The agency, meanwhile, has a growing backlog of pending
applications (currently more than 400,000) and an annual
argument with Congress because lawmakers divert about 10
percent of the money the patent office earns in user fees. 

Some of the problems are beyond the agency's control. The
ominous backlog is due to the increasing complexity of
applications, which now regularly arrive with reams of
technical supporting material. (Some are accompanied by
CD-ROM's containing millions of pages of data). 

But then there is the continual, chief complaint of
inventors and their lawyers: that patent examiners are
abysmal communicators, both orally and in writing. 

For several years, Congress has been pressuring the agency
to prepare a five-year plan to overhaul itself. Last year,
the Bush administration appointed a former California
Republican congressman, James E. Rogan, as its new
commissioner for patents and trademarks. In June, he
unveiled his 21st-century strategic plan, and over the
summer Mr. Rogan has extolled the proposals: the hiring of
over 2,000 new patent examiners (to join about 3,500); the
development of an electronic filing process for patent
applications; random spot reviews of the application
process; and certification of private companies to conduct
research that until now has been part of the patent
examiner's job. 

Moreover, Mr. Rogan is promoting extra fees for
applications that make more than 20 claims and a new $1,250
charge to pay for the patent examination process 

Even though the House and the Senate started the ball
rolling, the patent office cannot do anything with this new
plan other than wave it around until Congress passes the
2003 fiscal budget, as well as a new law authorizing the
fee increases. 

But Mr. Rogan is moving ahead anyway. He likes to say the
plan will transform his agency from a "one-size-fits-all
government bureaucracy" to something more like a
market-driven private enterprise. 

"We want to run this place like a business in every single
way except one: profit," he said in an interview last week.
"I don't want this office to make one penny of profit.
We're not profit-driven; this is a service organization. We
want our customers to tell us what they need from us." 

He smiled and added: "Even if we made a profit, I don't
think we'd see it anyway. Congress wouldn't let us keep
it." 

The plan is based on some fairly obvious ideas. Above all,
it says the agency must "go back to the basics" and process
patent applications without mistakes, or redundant or
unnecessary work. Doing so is supposed to save sufficient
money - nearly half a billion dollars through 2008 - that
it will cover the cost of new programs and new employees.
The patent office would accomplish this by making
procedures "simpler, faster, more accurate," "listening
more closely" to customers and "being more productive," the
plan says. 

Other goals include restoring the patent-pending period to
the average of 18 months that it briefly reached in the
early 1990's as opposed to the current 2 years; responding
to applications within six months instead of a year;
reducing the backlog by 75 percent; ensuring that issued
patents can withstand scrutiny and legal challenges; and
ultimately, creating a paperless agency. 

Mr. Rogan hopes to accomplish much of that by discouraging
inventors from filing applications with hundreds or even
thousands of claims, each elaborating how a chemical,
mechanical or electrical invention works. 

"A lot of filers throw everything at the wall, just to see
what will stick," he said. "There's a subculture of the
patent world that says, `Let's overwhelm the examiner and
see if he just lets it go.' " 

Whether the examiners capitulate or, overworked, simply
make too many mistakes, Mr. Rogan says excessive claims not
only slow patent processing but contribute to poor-quality
patents. 

"We spend an inordinate amount of time trying to clean and
separate, which the applicants should have done in the
first place," he said. 

In 1998, the agency sparked an uproar among inventors and
intellectual property specialists when it proposed a flat
limit on the number of claims. The plan died, but now Mr.
Rogan is tackling the same problem with a sliding scale of
fees for applications with more than 20 claims. (The figure
was chosen, he said, because the average number of claims
accepted by examiners is just 17.) 

"We're moving to free-market principles," he explained.
"The more you want to claim, the more you have to pay. The
more work you make us do, the more we'll charge you. The
more judicious you are in submitting claims, the more we
want to reward you with better and faster service." 

As simple as the ideas are, carrying them out will require
overcoming government bureaucracy. So in the name of
"agility" - the plan's term for one of three main strategic
thrusts - the Patent Office is stressing two unprecedented
new policies. One is allowing patent applications to be
filed electronically. The other is farming out to
contractors the researching of so-called prior art -
determining whether similar inventions already exist. 

Mr. Rogan acknowledged that examiners do not like the idea
because some believe it threatens their jobs. "And the
customer community gets apoplectic over anything
different," he added. 

He was even more blunt about the move to electronic filing.


"People are upset because it's new," he said. "Well, I'm
real sorry. But we do use e-mail here, we do use computers,
and they're faster, and more secure. We don't lose paper
and files, and we're more efficient. So that's the way it's
going to be." 

The second strategy thrust is "capability" and the third is
"productivity." Capability means that the 2,000 or so new
patent examiners will be subject to new tests before they
are hired. And all examiners and their bosses will be
required to undergo training and "re-certification"
throughout their careers. Those ideas could meet resistance
from the examiners' union, and they also seem to ensure
added layers of oversight, paperwork and procedures. 

One way the agency hopes to convince inventors of the new
plan is to use carrot-and-stick fees. The basic filing fee
will be lower, to compensate for the transfer of prior-art
searches to private companies that will impose their own
fees. But there will also be a hefty new examination fee,
so that the agency's examiners do not waste time working on
applications that inventors have filed but no longer care
about. 

"For all we know, the inventor may be off on his next deal;
but under the system now, he doesn't care because he's
already paid his fee," Mr. Rogan said. "We go ahead and do
the search, the examination and the prosecution. We don't
want to waste our time like that anymore." 

http://www.nytimes.com/2002/09/23/technology/23PATE.html?ex=1034047283&ei=1&en=9b0edf8e76352e5f



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