Rick Merritt
EE Times
(11/17/2008 4:42 PM EST)

SAN JOSE, Calif. — The U.S. Patent and Trademark Office gave itself high marks in an annual report issued Monday (Nov. 17) for meeting or exceeding its targets for handling a rising stack of patent applications. However, the office still has not found a route to clearing its growing backlog of applications despite several programs in the works.

A total of 495,095 patents were filed in the past fiscal year, up 5.7 percent from last year, according to the USPTO's 152-page annual report available online. Examiners read 448,003 patent applications in the past fiscal year, 14 percent more than in the 2007 fiscal year, and a record number (72.1 percent) were filed electronically.

On average it took examiners 25.6 months to take first action on a patent application and 32.2 months to make final decisions. The figures continue a gradual decline over the past several years. For example, in fiscal year 2005 the office took first action on applications within 21 months and final action within 29.1 months on average.

Performance varies widely in different patents and industry sectors

"I had a patent that took eight years to issue that was approved last year," said Steve Perlman, one of the inventors of Apple QuickTime and the WebTV set-top box who has testified before Congress on patent reform.

"I had another one that waited five years before a patent examiner took a first look at it in 2008. The file was not even opened for five years. There's a lot of stuff you file that will just not be significant in five years," he said.

"We are still falling behind, and the backlog is growing," said John Doll, Commissioner for Patents and Acting Deputy Under Secretary for the UPSTO in an interview with EE Times.

The USPTO hired more than 1,200 new examiners last year. It has been hiring nearly 1,000 examiners a year for the last few years, but it is not enough.

"Three years ago we had about 90,000 cases we couldn't get to, and two years ago it was about 60,000 cases," Doll said. "At our current rate in about 2012 filings may equal the number of cases we process, but we will probably have 800,000 cases in the backlog by then, so we need to gain efficiencies in the system, and that's what we are trying to do with some new programs," he added.

Getting a patent in 75 days
The office set up an accelerated program for applicants willing to simplify the number of their claims in order to get faster hearings. In the past fiscal year the office received 1,765 patents through that program, 173 percent more than last fiscal year when the program was launched. The program promises action within a year and had an average time to final action of 186 days.

"One application filed by Bose was allowed 17 days and issued 75 days after it was filed," said Doll. "People who want patents fast in the electronics industry are the primary ones using the program," he said.

The program requires applicants to conduct their own prior art searches and explain in writing how their innovation is different from past work. However, the process exposes applicants to legal challenges based on misinterpreting prior art, a fact that has kept the number of users of the program relatively very small.

The USPTO proposed streamlining the number of claims and extensions for a patent to speed the examination process. However, the effort has been blocked by a law suit case opposing the effort.

Meanwhile, the USPTO has been reaching out to patent offices in Europe and Asia to find ways to speed processing through collaboration. Several pilot programs with individual countries are now in the works.

"We are trying to share our searchers and examinations," said Doll.

The USPTO said patent quality is high based on two measures, one of them in use for more than 30 years, which Doll said are adequate. However, the office does not attempt to track the number of patent claims thrown out by challenges in court.

"That's an interesting idea," said Doll. "If a patent got litigated and claimed invalid we ought to look at why and see if it's a mistake from the examiner, but only a small number of patents get litigated," he added.

"The high tech industry has a strong concern about patent quality due to the patent thickets around most products," said Mike Mclean, vice president of professional services at Semiconductor Insights, a patent consulting firm, part of United Business Media, the publisher of EE Times.

"The general consensus is that the patent office still has a way to go to deliver the desired level of performance, but that it is moving in the right direction," said Mclean. "The USPTO leadership recognized there was an issue and has put programs in place in an effort to drive improvement. Personally, I like the thinking behind the accelerated examination program and increased collaboration with other patent offices," he added.

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