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Tuesday, September 20, 2011

Recent Developments in Patent Administration: Implications for Innovation Policy

John R. Thomas
Visiting Scholar

Congressional interest in the operation of the U.S. Patent and Trademark Office (USPTO) has been demonstrated by extensive discussion of patent reform proposals that would impact that agency. An increasing number of patent applications filed each year, the growing complexity of cutting edge technology, and heightened user demands for prompt and accurate patent services are among the challenges faced by the USPTO. Stakeholders have expressed concern over the agency’s large backlog of patent applications that have been filed but have yet to receive examiner review. Others have expressed concerns about the agency’s accuracy in approving applications only on those inventions that fulfill the statutory requirements to receive a patent.

Even as discussion of patent reform has continued in Congress, the USPTO has actively engaged in efforts to address its application backlog, maintain high levels of patent quality, and more generally improve contemporary patent administration. The agency has launched a number of initiatives in recent years to address perceived concerns over the patent-granting process, including: 

        The Patent Application Backlog Stimulus Reduction Plan, which allows an individual who has filed multiple applications to receive expedited review of one patent application when he agrees to withdraw another, unexamined application. 
        The Patent Prosecution Highway, which allows certain inventors who have received a favorable ruling from the USPTO to receive expedited review from foreign patent offices. 
        The Enhanced First Action Interview Pilot Program, which allows applicants to conduct an interview with patent examiners early in the review process. 
        The “Three-Track Initiative,” under which an application would be placed into one of three queues: prioritized examination, traditional examination, or delayed examination. 
        The Adoption of Metrics for the Enhancement of Patent Quality, which endeavors to improve USPTO mechanisms for measuring the quality of patent examination.
A number of patent reform issues under consideration by the 112th Congress would potentially impact upon the ability of the USPTO to respond to changing circumstances in the intellectual property environment. In particular, two bills before the 112th Congress, H.R. 1249 and S. 23, would grant the USPTO the ability to set its own fees, potentially allowing the agency to act in a more flexible manner. In addition, discussion persists over whether the USPTO should have greater ability to engage in substantive rulemaking.

Date of Report: July 28, 2011
Number of Pages: 18
Order Number: R41995
Price: $29.95

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