Tag Archives: Examination Backlog

The Confused USPTO Policy On Certified Copies Of Patent Applications

Obtaining certified copies of patent applications can be essential to perfecting a priority claim. But when a U.S. priority application contains a sequence listing, USPTO practices make it difficult to satisfy this requirement. While there is a work-around, it is cumbersome and potentially costly. The USPTO can solve this problem, but will it?… Continue reading this entry

Delayed Restriction Requirement Does Not Result In Patent Term Adjustment For Divisional Application

In Mohsenzadeh v. Lee (decided March 19, 2014), the U.S. District Court for the Eastern District of Virginia held that the Patent Term Adjustment (PTA) statute does not provide PTA to a divisional application when the USPTO takes longer than 14 months to issue a Restriction Requirement in the parent application. While this decision is not surprising, … Continue reading this entry

USPTO Eases Requirements For Track I Prioritized Examination

In a Federal Register Notice issued March 5, 2014, the USPTO announced interim rules under the Track I prioritized examination program that ease the formal requirements for obtaining Track I prioritized examination of a new application. The eased requirements apply to all Track I requests filed since September 16, 2012 (even if previously rejected) as … Continue reading this entry

Compact Prosecution 2.0 -- Changing The U.S. Patent Examination Paradigm

William F. Smith of Woodcock Washburn LLP and Joseph Mallon of Knobbe Martens (colleagues on the IPO Patent Office Practice Committee)** have prepared a white paper that encourages us to take a step back from the current U.S. patent examination paradigm, and move forward to “Compact Prosecution 2.0.” Their proposal would eliminate two significant patent … Continue reading this entry

A Look At The USPTO Backlog Statistics

As the USPTO fiscal year comes to an end on September 30, I thought this would be a good time to review the USPTO backlog statistics. The currently available data reflects the backlogs as of the start of August 2013, and reveals a decrease in the backlog of unexamined applications, a slight decrease in the … Continue reading this entry

USPTO Reshuffles The RCE Deck

The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more prompt examination after a Request for Examination (RCE) is filed. However, because that the backlog of RCEs awaiting examination has climbed to over 110,000, it could be some time before applicants … Continue reading this entry

Taking A Stand On USPTO Request For Continued Examination (RCE) Policy

Next week (February 4, 2013) is the deadline for submitting comments in response to the USPTO’s request for feedback on Request for Continued Examination (RCE) practice. (This article provides more information on the request for feedback.) The USPTO’s treatment (or neglect) of RCEs will become even more frustrating after March 19, 2013, when the costs for … Continue reading this entry

USPTO Seeks Comments On Request For Continued Examination (RCE) Practice

The USPTO is seeking public comments on Request for Continued Examination (RCE) practice. In particular, the USPTO is “soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE.” The USPTO tends to have a negative view of RCEs, so this is an important opportunity … Continue reading this entry

Tour De COPA

Memorial Day Weekend takes on special meaning in the Washington, D.C. area. New flags are placed on the gravesites at Arlington National Cemetery, Rolling Thunder comes to town to remind us of soldiers who are prisoners of war or missing in action, and families and friends honor their loved ones who served this country, visiting the Vietnam … Continue reading this entry

Holding The USPTO Accountable For The RCE Backlog

As I was cleaning up my office a few weeks ago, I came across a December 2009 article I wrote with my colleague Steve Reid for BNA’s Patent, Trademark & Copyright Journal, entitled “New Patent Office Examination Procedures: Bane or Boon?” The article discusses the then-new changes to the USPTO’s internal procedures for examining applications … Continue reading this entry

USPTO Launches Humanitarian Awards Pilot Program

The USPTO has announced that it is launching its pilot program “to incentivize the distribution of patented technologies to address humanitarian needs.” As explained in the  Federal Register Notice, “the pilot program will be run as an awards competition.” The program will be open to owners of granted patents and pending patent applications in four … Continue reading this entry

The Rhyme & Reason Behind The USPTO's Proposed Patent Fees

On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed … Continue reading this entry

USPTO Opens Track I Expedited Examination To RCEs

In today’s Federal Register Notice, the USPTO announces the expansion of its Track I program for fee-based expedited examination to include Requests for Continued Examination (RCEs). While this may be good news on a practical level, it exacts a high price to obtain prompt review of an application that already is midstream in the examination process. … Continue reading this entry

Tidbits From IPO PTO Day

I was co-chair of last week’s IPO PTO Day conference, and it was a great event. The program included several speakers from the USPTO, including Commissioner for Patents Bob Stoll, Deputy Commissioner for Patents Peggy Focarino, Chief Administrative Patent Judge James Smith, Vice Chief Administrative Patent Judge James Moore, and Administrative Patent Judge Michael Tierney. … Continue reading this entry

USPTO Track I Fee-Based Prioritized Examination Available Now

As of September 26, 2011, applicants can seek fee-based prioritized examination under the USPTO’s Track I program. The September 23, 2011 Federal Register Notice sets forth the details of the program, which is largely identical to that previously set to take effect May 4, 2011, although the basic fee is higher. The USPTO decided not to … Continue reading this entry

USPTO Says Status Inquiry Triggers Patent Term Adjustment Deduction

Despite statistics on the USPTO’s Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer. When I telephone examiners to check on the status of my applications, they are sympathetic … Continue reading this entry

USPTO Backlog Update: One Step Forward, One Step Back

The USPTO has been touting recent data indicating that it continues to make progress in reducing the backlog of new patent applications awaiting examination. At the same time, the number of applications awaiting examination after a Requests for Continued Examination (RCE) has ballooned. I am frustrated by the USPTO’s attitude towards RCEs, and its willingness … Continue reading this entry

How Will Patent Reform Solve The USPTO Backlog?

Last week, The Kojo Nnamdi Show on Washington, D.C. public radio station WAMU had two programs about patent reform. On Tuesday, there was a panel discussion on “Innovation and Patent Reform.” On Wednesday, Kojo talked with USPTO Director David Kappos about “Updating the U.S. Patent Office.” While I usually cringe when mainstream media discusses patent issues, … Continue reading this entry

A Look At The USPTO's March 2011 Statistics

The latest post on “Director’s Forum,” the public blog of USPTO Director Kappos, is a guest post by Bob Stoll, the Commissioner for Patents, announcing the release of March 2011 data on the USPTO’s Patents Dashboard. Now that we are half way through the current fiscal year, I am glad to see that the USPTO appears … Continue reading this entry

May 4 Effective Date for USPTO Fee-Based Prioritized Examination (Track I)

On April 4, 2011, the USPTO issued a Notice in the Federal Register announcing the implementation of fee-based prioritized examination, also known as “Track I” of its three tracks of examination options proposed in June of 2010. Track I will be available for non-reissue applications filed on or after May 4, 2011. While this program may be … Continue reading this entry

The Washington Post Muddies The Waters On Patent Reform

Now that the Senate is set to vote on the Patent Reform Act of 2011 this week, the mainstream media is weighing in on the issues. This Saturday, The Washington Post published an editorial in support of patent reform, (“Why The patent process should be overhauled,” Feb. 26, 2011) but it butchered the background facts … Continue reading this entry

Fee-Based Fast-Track Examination On The Horizon?

The USPTO has issued a proposed rulemaking supporting its plans to implement "Track I" of the three track examination program announced last year. According to the announcement, the USPTO is still considering public comments on other aspects of the program, but wants to move forward with Track I because "the vast majority of public input was supportive." … Continue reading this entry

USPTO Working To Improve PCT Functions

In a recent blog post, Director Kappos wrote about USPTO efforts to improve its performance as a PCT Receiving Office (RO), International Searching Authority (ISA), and International Preliminary Examining Authority (IPEA). The USPTO has improved some statistical measures of its performance, such as different processing times, but still falls short on the timeliness and quality … Continue reading this entry