Request for Comments on Optimum First Action and Total Patent Pendency, 38854-38855 [2014-16031]

Agencies

• DEPARTMENT OF COMMERCE

[Federal Register Volume 79, Number 131 (Wednesday, July 9, 2014)]
[Notices]
[Pages 38854-38855]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-16031]



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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No. PTO-P-2014-0025]


Request for Comments on Optimum First Action and Total Patent 
Pendency

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
seeking public input on optimal patent first action and total pendency 
target levels. The current targets of ten month average first action 
pendency and twenty month average total pendency were established with 
stakeholder input in the previous USPTO 2010-2015 Strategic Plan. In 
the USPTO 2014-2018 Strategic Plan, the USPTO included an initiative to 
``work with stakeholders to refine long-term pendency goals, while 
considering requirements of the IP community''. The USPTO recognizes 
the importance of continually refining and defining optimal pendency to 
take into consideration the external environment affecting workload 
inputs, the commitments made to the fee paying public, and the need to 
ensure a balance between workload, production capacity, and 
requirements of the Intellectual Property (IP) community. As a first 
step in beginning that initiative, the USPTO is seeking public input 
about IP community's suggestions for optimal patent first action and 
total pendency target levels.

DATES: Comment Deadline Date: Written comments must be received on or 
before September 8, 2014.

ADDRESSES: Comments must be sent by electronic mail message over the 
Internet addressed to: patent_pendency2014@uspto.gov.

FOR FURTHER INFORMATION CONTACT: Gregory L. Mills, Office of the 
Commissioner for Patents, at 571-272-1439.

SUPPLEMENTARY INFORMATION: As noted in the new 2014-2018 USPTO 
Strategic Plan, the USPTO is committed to working with stakeholders to 
refine long-term patent pendency goals, while considering the need for 
quality examination and other requirements of the IP community. See 
https://www.uspto.gov/about/stratplan/index.jsp. The purpose of this 
Request for Comments is to gather stakeholder input on optimal patent 
pendency levels. This information will be used to help the USPTO plan 
for patent pendency targets that are optimal for the Office, 
stakeholders, and the public at large. Reaffirming or refining the 
optimal pendency levels also will provide the USPTO with targets to use 
in planning for patent examination staffing levels and other agency 
resource requirements. In turn, these resource requirements will inform 
patent fee levels and revenue estimates during the biennial patent fee 
review.
    The current targets are ten month average first action pendency and 
twenty month average total pendency which are measures of the 
timeliness of the examination process. More specifically, average first 
action pendency, or average first office action pendency, is the 
average number of months from the patent application filing date until 
the date a first office action is mailed by the USPTO. This time 
includes not only the time an application is awaiting a decision by the 
USPTO, but also any time awaiting a reply from an applicant, for 
example, their time to submit all parts of their patent application. 
Average first action pendency is an average for all applications that 
have a first office action mailed over a three-month period of time.
    Average total pendency is the average number of months from the 
patent application filing date until the date the application either 
issues as a patent or goes abandoned. This time includes not only the 
time an application is awaiting action by the USPTO, but also includes 
any time awaiting a reply from an applicant, for example, including any 
extensions of time. Average total pendency is an average for all 
applications that either issue as a patent or go abandoned over a three 
month period of time. It does not include applications in which a 
Request for Continued Examination (RCE) has been filed.
    The current targets of ten month average first action pendency and 
twenty month average total pendency were established about five years 
ago in the USPTO's 2010-2015 Strategic Plan. These targets have guided 
the USPTO in making significant reductions to pendency over the past 
four years, specifically: (1) A thirty percent reduction in average 
first action pendency, from an average first action pendency of 25.7 
months in fiscal year (FY) 2010 to the current average first action 
pendency of 18.1 months; and (2) a twenty percent reduction in average 
total pendency, from an average total pendency of 35.3 months in FY 
2010 to the current average total pendency of 28.1 months.
    The USPTO worked closely with stakeholders and responded to their 
concerns in establishing the targets of ten month first action pendency 
and twenty month total pendency in the previous 2010-2015 Strategic 
Plan. These pendency targets were supported by stakeholders when they 
were announced in 2009 (e.g., the Patent Public Advisory Committee 
(PPAC) gave its support to these pendency timeframes in their 2009 
Annual Report).
    In the January 2013 final rule to set and adjust patent fees under 
the authority provided in section 10 of the Leahy-Smith America Invents 
Act (AIA) (Pub. L. 112-29, 125 Stat. 284, 316-17 (2011)), the PPAC 
commented in the Patent Public Advisory Committee Fee Setting Report of 
September 24, 2012 that it ``supports reducing pendency and while the 
proposed levels are laudable, there is nothing magical about the 
proposed pendency times,'' specifically ten month first action pendency 
and twenty month total pendency. See Setting and Adjusting Patent Fees, 
78 FR 4211, 4244 (January 13, 2013). The PPAC advised that for future 
years it will be important to reach a properly balanced inventory level 
of patent applications pending at the USPTO that is appropriate for the 
workforce level. See id. Further, the PPAC stated that inventory should 
be low enough to achieve desired decreased pendency and high enough to 
accommodate potential fluctuations in application filings, retention of 
examiners, and changes in RCE filings stemming from the programs being 
instituted by the USPTO. See id.
    The USPTO also currently has available a number of alternative 
prosecution options designed to reduce pendency including:
     Prioritized Examination (Track One) which allows users to 
receive a final disposition within an average of 12 months.
     Patent Prosecution Highway, which provides that when 
claims are determined to be allowable in the Office of First Filing, a 
corresponding application filed in the Office of Second Filing may be 
advanced out of turn.
     First Action Interview (FAI) Pilot program, in which an 
applicant is entitled to a first action interview, upon request, prior 
to the first Office action on the merits.
     After Final Consideration pilot (AFCP), which authorizes 
additional time for examiners to search and/or consider responses after 
final rejection.
     Quick-Path IDS (QPIDs) which eliminates the requirement 
for processing of a request for continued examination (RCE) with an 
information disclosure statement (IDS) filed after

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payment of the issue fee in order for the IDS to be considered by the 
examiner.
    Further details about these programs can be found at the USPTO 
Patent Application Initiatives Timeline Internet Web site (https://www.uspto.gov/patents/init_events/patapp-initiatives-timeline.jsp). 
Additionally, the USPTO has a number of different patent pendency 
measures displayed on the Data Visualization Dashboard of the USPTO's 
Internet Web site (https://www.uspto.gov/dashboards/patents/main.dashxml).
    The public is invited to submit comments on issues related to 
patent application pendency that they deem relevant. Comment regarding 
the issues below would be particularly helpful to the USPTO:
    1. Are the current targets of ten month average first action patent 
pendency and twenty month average total patent pendency the right 
agency strategic targets for the USPTO, stakeholders, and the public at 
large? If not, what are the appropriate average first action patent 
pendency and average total patent pendency targets, and what is the 
supporting rationale for different targets?
    2. Average first action pendency and average total pendency have 
been the historical measures for many years. Using average pendency as 
the historical measure allows for a range of pendency across all 
applications in all technology areas. Should the USPTO have first 
action pendency and total pendency targets be met by nearly all 
applications (e.g., 90 or 95 percent of applications meeting the 
pendency target) rather than an average first action pendency and total 
pendency targets? If so, what should the percentage be and why?
    3. Using average pendency as the historical measure also allows for 
a range of pendency across different examining units. Should the USPTO 
consider more technology level patent pendency targets, for example, at 
the Technology Center level? If so, should all the Technology Centers 
have the same target? If not, please explain why Technology Centers 
should have different pendency target levels and how they should be 
determined?
    4. The American Inventors Protection Act (AIPA) provides for patent 
term adjustment for certain examination delays. See Public Law 106-113, 
113 Stat. 1501, 1501A-557 through 1501A-560 (1999). The patent term 
adjustment (PTA) provisions set out examination timeframes, which may 
result in patent term adjustment if not met. See 35 U.S.C. 154(b)(1)(A) 
and (b)(1)(B). These examination timeframes are referred to within the 
USPTO as ``14-4-4-4-36'' timeframes. The ``14'' refers to fourteen 
months to first action. See 35 U.S.C. 154(b)(1)(A)(i). The first ``4'' 
refers to four months to respond to an amendment or RCE. See 35 U.S.C. 
154(b)(1)(A)(ii). The second ``4'' refers to four months to act on an 
application after a Patent Trial and Appeal Board (PTAB) or court 
decision when allowable claims remain in the application. See 35 U.S.C. 
154(b)(1)(A)(iii). The third ``4'' refers to four months to issue an 
application after payment of the issue fee. See 35 U.S.C. 
154(b)(1)(A)(iv). Finally, the ``36'' refers to thirty-six-month (or 
three-year) total pendency. See 35 U.S.C. 154(b)(1)(B). If the USPTO 
considered using targets tied to these PTA provisions, the measure 
could differ from the current average pendency target measures in a few 
notable ways.
    First, a target tied to PTA provisions could be based on the 
percent of applications that were completed within a certain number of 
months, rather than the average of all applications completed. Should 
the USPTO consider using a first action pendency target tied to 
minimizing the number of applications in which a first action is not 
mailed within fourteen months?
    Second, the PTA provisions include more specific actions by the 
USPTO in specific timeframes. Should the USPTO also consider using some 
of the other PTA specific timeframes for their optimal pendency 
targets?
    5. The PPAC has previously suggested the USPTO's goal to reduce 
first action pendency to ten months may have the unintended 
consequences of increasing the uncertainty of the patenting process and 
potentially reducing the quality of patents due to the possibility of 
``hidden'' prior art since patent applications are not published until 
eighteen months after their filing date. See Setting and Adjusting 
Patent Fees, 78 FR at 4244-45. This potential of ``hidden'' prior art 
mentioned by the PPAC could be exacerbated by changes in the AIA 
regarding prior art submissions by third parties. See 35 U.S.C. 122(e). 
In other words, a USPTO policy to encourage completing first office 
actions too soon after the filing date of an application does not allow 
for the publication of all pertinent patent prior art and for the 
appropriate window for third party prior art submissions. Would the 
benefits of a prompt first Office action outweigh potential concerns of 
the Office action being issued too quickly?
    6. There have been suggestions that many changes are occurring in 
the IP system, and the USPTO should be cautious at this point in time 
to avoid going too low in first action pendency. For example:
    a. Some potentially significant case law decisions are pending 
which may impact large categories of inventions and possibly lead to 
reduced patent filings.
    b. It has been just over one year since patent fees were adjusted. 
See Setting and Adjusting Patent Fees, 78 FR 4211 (January 13, 2013). 
User practices and business decisions based on the adjusted fee levels 
may not have stabilized yet.
    c. There is a lot of activity in the global IP arena which may 
impact patent filing activity and IP practices in the United States.
    The USPTO welcomes comments on these potential concerns.
    7. In addition to seeking public input on optimal patent first 
action and total pendency levels, the USPTO also is interested in 
knowing if there are other activities where pendency or timeliness 
should be measured and reported. While the USPTO reports on a number of 
different patent pendency measures displayed on the Data Visualization 
Dashboard of the USPTO's Internet Web site (www.uspto.gov):
    a. What other metrics should the USPTO consider utilizing to 
measure pendency or timeliness throughout the examination process?
    b. Specifically regarding RCEs, what other metrics should the USPTO 
consider utilizing to measure the pendency or timeliness regarding 
RCEs? Should these metrics also be considered for other continuing-type 
applications (i.e., continuation, continuation-in-part, and divisional 
applications)?

    Dated: July 2, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-16031 Filed 7-8-14; 8:45 am]
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