Margaret Peterlin made her comments during a keynote address delivered at the IQPC Global IP Exchange conference in Pinehurst, North Carolina yesterday.
Peterlin said that the USPTO received 468,000 patent applications in 2007. By the end of 2007 there were a total of 760,000 patent applications pending at the Office. Although 1,200 new examiners will be hired this year, in the face of such numbers, Peterlin told the audience: “Hiring won’t help.”
Further complicating matters, 90% of all patent applications at the USPTO are rejected the first time they are reviewed. “There should be no disagreement that this is not an efficient allocation of resources,” she said.
One programme that has been implemented by the Office in an attempt to address patent pendency problems is the accelerated examination process. “This programme works,” said Peterlin, who noted that one patent application submitted under the programme went from filing to issuing in under four months. She also said that the PTO is considering options such as adopting a deferred examination process, which is used in jurisdictions including Korea and Japan.
Peterlin echoed the administration’s recent emphasis on Applicant Quality Submissions (AQS), and said that “a high-quality application by the person who knows the invention best is crucial”.
The AQS provision of patent reform bill S1145, which would require patent applicants to submit search reports with each application, has been widely touted by the Office as one of the best solutions to the problems of both pendency and poor patent quality.
But many Global IP Exchange delegates seemed sceptical, and drew attention instead to problems such as the high attrition rate of examiners at the PTO. About 48% of patent examiners have been with the Office three years or less.
During a recent partnership between the USPTO and the George Washington University School of Business, for which the PTO received considerable criticism, the winning team of the 2008 International MBA Business Case Competition suggested that the Office’s backlog may be due in part to a serious “expectation gap” among new hires, which needs to be closed.
Peterlin said that one solution to that problem may be to have candidates participate in the Office’s “A Day in the Life of an Examiner” programme, but that finding funding for such a scheme would be a problem.
In an attempt to better understand the value of IP to companies, Peterlin also announced that the PTO has enlisted Ernst & Young to produce a White Paper on best IP practices, which is scheduled to be released in one month. Peterlin said that one trend found during the study indicated that the traditional value placed on the sheer number of patents in a company’s portfolio may be changing in favour of an increased focus on patent quality, due to recent US litigation trends.
She also addressed the status of the USPTO’s various pending rules packages in light of the enjoinment of the Office’s rules on claims and continuations last month. The pending packages include new proposed rules on Information Disclosure Statements and Markush – or alternative – claim language, as well as changes in procedures for filing an appeal with the Board of Patent Appeals and Interferences.
“We’re reviewing all of our rules packages right now and determining which rules to take in which order,” Peterlin told Managing IP. “It would create confusion to drop five rules packages. The rules on patent appeals at the Board would have the most impact in terms of operational efficiencies.”
No announcement has yet been made regarding the USPTO’s next steps following Judge Cacheris’ decision to grant GlaxoSmithKline’s and inventor Triantafyllos Tafas’ motion for summary judgment enjoining the Office’s rules package on claims and continuing applications.
Other issues addressed in Peterlin’s keynote speech included work sharing among the five major IP offices worldwide and the USPTO’s plan to implement enhanced search tools at the Office over the next six years.
“There’s a clear recognition across all industries that the patent system is starting to creak and moan,” she said. “We have to decide what’s going to promote innovation – that’s our charge.”
