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 to be making at least incremental progress in some areas. However, I am still bothered by some of the data.

First, The Bad News

The Commissioner acknowledges that “Traditional First Action Pendency” (the time to first Office action) has increased to an average of 25.3 months. This is the highest First Action Pendency since October 2010 (the first month of the current fiscal year), and marks the second monthly increase since a low of 24.2 months in January. The data for Group 1600 (Biotechnology and Organic Chemistry) and Group 1700 (Chemical and Materials Engineering) are a bit better, at 21.5 and 24.7 months, respectively.

The Commissioner explains that the USPTO has been focusing on examining the oldest applications, a program he refers to as “Clearing the Oldest Patent Applications (COPA) initiative.”  The “oldest applications” apparently include 197,583 applications that have been waiting at least 16 months for an Office Action. (It is not clear how these efforts coincide with the USPTO’s plans to offer fee-based expedited examination to up to 10,000 new applications under it’s new Track I program.)

The RCE Asterisk* To The Good News

The Commissioner is more proud of the “Traditional Total Pendency” data, which decreased from 34.0 months in February to 33.9 months in March. This data point measures the time to “final disposal” (e.g., grant or abandonment) but counts the filing of a Request for Continued Examination (RCE) as a disposal. As a result, this data point gives the USPTO credit for promptly issuing final Office actions that necessitate an RCE.

The data for Group 1600 and Group 1700 are notably worse, at 35 and 36.2 months, respectively. Thus, while applications in these areas may receive a first Office action sooner than average, their overall prosecution time is longer.

When RCE pendency is included in the “Total Pendency” measure, the time period jumps to 41.6 months, which reflects a gradual but steady decline since a high in August of 42.8 months, and a return to the March 2010 level. (The USPTO does not provide a Group breakdown for this data point.)

The average pendency of RCE applications (any application with one or more RCE filed) is 63.3 months, up from 61.5 months in October. That’s over 5 years out of a 20-year patent term!

The Allowance Rate data also are reported with and without RCE data. In true government-speak fashion, the RCEs are either included or not included as abandoned applications. Thus, the “Allowance Rate, including RCEs” of 46.2% (up from 40.5% in October) means that out of all applications allowed, abandoned or with an RCE, 46.2% were allowed.  The “Allowance Rate without RCEs” of 62.9% (up from 60%) means that out of the applications that were either allowed or abandoned, 62.9% were allowed.  

I am bothered by the USPTO’s explanations of its treatment of RCEs. It repeatedly refers to counting or not counting “the abandonment for the filing of an RCE,” but a Request for Continued Examination does not result in abandonment of any application. It may be that an examiner gets the same credit for a “disposal,” but the USPTO should be more careful with its language, especially when using terminology relating to pendency.

At some point, I’d like to see an allowance rate for RCEs—the percent of RCEs that are eventually allowed or abandoned. In my experience, an RCE can be a necessary route on the way to allowance. High post-RCE allowance rates might indicate on-going issues with “churning” or could be correlated with new rejections being made in final Office actions.

The most surprising data on the dashboard is the “Pendency from RCE Filing To Next Office Action,” which is 3.3 months—in my experience, the post-RCE delay is much longer. On the other hand, 3.3 months is the longest delay for the months reported (going back to October 2009). If the shorter delays are associated with allowances, that also could indicate on-going issues with churning, such as if an examiner required an RCE to enter an amendment that clearly resulted in allowance.

Progress On The Backlog

The USPTO is making progress on its backlog of unexamined applications, which were down to 708,912 at the end of March. On the other hand, new application filings are up, and the USPTO predicts “a 4.9% increase in filings this fiscal year.” Too bad Congress didn’t take that into account when it passed the USPTO’s current fiscal year budget.

Good News For The Future

Another bit of good news: the USPTO has added over 600 new examiners during this fiscal year (i.e. , since October). As these examiners complete training, the USPTO should be able to reduce its backlog and pendency time even more. Hopefully these examiners are receiving ample training, supervising and mentoring to maintain and improve patent quality.