USPTO Unveils Pilot Program to Accelerate Examination of Green Technologies

The U.S. Patent & Trademark Office announced a pilot program to accelerate the patent examination of “green” technology patent applications.  The intention of the pilot program is to accelerate the development and deployment of green technology.  It is expected that the patent applications entered into the pilot program will be examined approximately one year earlier.  It currently takes approximately 30 months for a first office action and approximately 40 months for a final decision on green technology patent applications.

You can read the USPTO Press Release on Accelerating Green Technology Patent Applications.

Appeal of Tafas v. Kappos Dismissed

On November 13th, an en banc Court of Appeals for the Federal Circuit granted the joint motion of all parties to dismiss the appeal of Tafas v. Kappos (the “continuation and claims rules” case).  Hence, the continuation and claims restrictions rules previously instituted by the USPTO are now officially gone.  The Federal Circuit refused to vacate the district court’s grant of summary judgment.

See the Tafas v. Kappos Dismissal.

USPTO Rescinds Controversial Proposed Patent Regulations

The USPTO filed a joint motion with GlaxoSmithKline to dismiss the lawsuit related to regulations affecting the ability to secure patent protection for inventions.  Director of the USPTO David Kappos stated:

The USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market.  These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.  We are grateful to GlaxoSmithKline for working with us to file this joint motion to both dismiss the appeal and vacate the district court’s decision. This course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.

While the USPTO’s decision was expected based upon prior comments from the USPTO, this joint motion is excellent news for all patent applicants to avoid being severely limited in seeking patent protection on important technology.

LITIGATION HISTORY.  In August 2007, the USPTO published new rules intended to help improve examination efficiency and quality.  The proposed rules would have permitted a patent applicant to only file two (2) continuation applications and one (1) request for continued examination (RCE) per application family as a matter of right.  For a third or subsequent continuation application or RCE, the applicant would have had to make a case to the USPTO to show why the additional filing was needed.  In the fall of 2007, GlaxoSmithKline and Dr. Tafas filed a lawsuit against the USPTO in U.S. District Court of the Eastern District of Virginia seeking a preliminary injunction to stop the new rules.  In April 2008, the Court granted a permanent injunction against the new rules and the USPTO appealed to the U.S. Court of Appeals for the Federal Circuit which partially ruled in favor of the USPTO.  A rehearing was granted by the Federal Circuit with additional briefing to have started in the coming weeks.

USPTO Proposes Significant Changes to Examiner Count System

Here is some news from the USPTO that could significantly affect — in a good way — how patent applications are examined.  Director of the United States Patent and Trademark Office (USPTO) David Kappos today unveiled a series of proposals to bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. The proposal was developed by a task force comprised of senior managers in the Patents organization and leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners.

“Secretary Locke directed us to adopt an ambitious agenda to address the significant challenges at USPTO and that’s what we’re doing,” Kappos said. “We’ve worked closely with labor representatives to propose a long-overdue transformation of the count system. We hope to move expeditiously toward adoption of these changes that will benefit examiners, the agency and the IP community as a whole.”

The full proposal is available on the USPTO Web site here.

The proposed changes are designed to:

— Set the foundation for long-term pendency improvements.

— Increase customer satisfaction by incentivizing quality work at the beginning of the examination process.

— Encourage examiners to identify allowable subject matter earlier in the examination process.

— Rebalance incentives both internally and externally to decrease rework.

— Increase examiner morale and reduce attrition.

The proposed changes represent what would be the most significant changes to the count system in more than 30 years. The count system was created in the mid-1960s and hasn’t been revised since 1976.

The proposal addresses the following areas of change:

  • Improved working conditions:  While the proposal increases the time examiners have overall, it provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly. 
  • More time for examiners:  The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs)* and providing consistent credits for transferred or inherited amendments.
  • Process changes:  These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.

“These proposed changes will lead to earlier identification of patentable subject matter, which will benefit both the USPTO and applicants,” Deputy Commissioner for Patents Peggy Focarino said. “Over the long term, we believe these changes will promote quality examination and set a foundation for pendency improvements.”


POPA President Robert Budens also expressed support for the proposed changes.


“The count system is sorely in need of re-tooling, and we feel this proposal is a necessary first step toward giving examiners the time they need to do a quality examination,” Budens said. “We are pleased to have been involved in developing this proposal and we are hopeful it is one that our members will support.”


The task force expects the improvements in overall efficiency caused by getting to examination more quickly will offset the increased time provided for examination.  And, importantly, they expect improved quality by providing examiners with more time up front in the first office action to do a thorough search and examination.  The task force is prepared to propose adjustments as warranted should the changes not yield the anticipated results.


This proposal is intended to be part of an iterative process of improvements to the count system. The task force will measure the effects of these changes and gather internal and public feedback, and will meet on a regular basis to monitor progress and consider additional changes.


New USPTO Director: “Patent quality does not equal rejection.”

It appears that the new USPTO Director (Kappos) is taking little time to change the direction of the USPTO from rejecting patent applications to actually granting patent applications (the USPTO allowance rate has recently dropped close to 42% from a previous average of 70%).  In a recent e-mail to Patent Examiners, Director Kappos stated the following which is welcome news to everyone involved with patents:

One key is to expeditiously identify and resolve issues of patentability—that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.

On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality.  Let’s be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently—what we all know as compact prosecution.

When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. … [B]y engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection.

Only time will tell if the Patent Examiner’s actually follow the lead of the new Director.

David Kappos Confirmed as New Director of the U.S. Patent & Trademark Office (USPTO)

*** From the USPTO August 7, 2009 ***

David Kappos Confirmed as Patent and Trademark Office Director
The U.S. Senate today confirmed David Kappos as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO).

U.S. Commerce Secretary Gary Locke issued the following statement:

“We are grateful to the Senate for its swift confirmation of David Kappos to lead the U.S. Patent and Trademark Office. “It’s no secret that the agency currently faces significant and persistent challenges, but David is the right person to meet them and carry out my top priority for the USPTO — dramatically reducing the unacceptably long time it takes to process patent applications.”

Kappos Background

Over a 20-year career, David Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. Most recently, he was the vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos managed IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.

He takes control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.

Recently, Kappos has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He also has been the Vice President of the Intellectual Property Owners Association. He has held various leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.

Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.

Federal Circuit Agrees to Rehear Controversial Tafas v. Doll

On July 6th, the Federal Circuit granted a petition to rehear the Tafas v. Doll case which a 3 judge panel previously held that the USPTO had authority to adopt rules limiting the number of patent claims in a patent application and the number of requests for continued examation (RCE), although it could not limit the number of continuation applications.  This is an important case for inventors and businesses because if the previous decision is upheld patent applicants (1) will be significantly limited in the number of claims they can include in a patent application and (2) have to file continuation applications instead of the faster RCE route.  See the Tafas v. Doll Order.