The NY Times is running a story about how the Patent and trademark office is trying to reform itself. Among some of the reforms sought, is higher fees for the initial processing fee, higher fees for more than 20 claims, higher fees for the more work the examiners have to due (lower fees for less work and fewer claims), 2000 more examiners, and required continued relevance of the examiner in their field (certification and re-certification). My favorite quote “…Mr. Rogan says excessive claims not only slow patent processing but contribute to poor-quality patents.” They are trying to crack down on abundant claims and too-technical jargon which they claim overworks the examiners, reduces the quality of the patent, and other things. Worth a read.
In their appropriations committee reports for 2002, both the House and the Senate made it clear they were not happy with the Patent and Trademark Office. It was not the first time, and the patent office’s customers have not been happy with the agency for a while, either.
In fact, for several years the patent office’s basic functions have had serious problems. It typically takes a year before an inventor hears a first response to an application, and then an average of slightly over two years before a patent is issued (and there are warnings that this will soon stretch out to three). And there have been increasingly frequent complaints about the quality of the patents themselves and doubts about the skills of the patent examiners.
The agency, meanwhile, has a growing backlog of pending applications (currently more than 400,000) and an annual argument with Congress because lawmakers divert about 10 percent of the money the patent office earns in user fees.
Some of the problems are beyond the agency’s control. The ominous backlog is due to the increasing complexity of applications, which now regularly arrive with reams of technical supporting material. (Some are accompanied by CD-ROM’s containing millions of pages of data).
But then there is the continual, chief complaint of inventors and their lawyers: that patent examiners are abysmal communicators, both orally and in writing.
For several years, Congress has been pressuring the agency to prepare a five-year plan to overhaul itself. Last year, the Bush administration appointed a former California Republican congressman, James E. Rogan, as its new commissioner for patents and trademarks. In June, he unveiled his 21st-century strategic plan, and over the summer Mr. Rogan has extolled the proposals: the hiring of over 2,000 new patent examiners (to join about 3,500); the development of an electronic filing process for patent applications; random spot reviews of the application process; and certification of private companies to conduct research that until now has been part of the patent examiner’s job.
Moreover, Mr. Rogan is promoting extra fees for applications that make more than 20 claims and a new $1,250 charge to pay for the patent examination process
Even though the House and the Senate started the ball rolling, the patent office cannot do anything with this new plan other than wave it around until Congress passes the 2003 fiscal budget, as well as a new law authorizing the fee increases.
But Mr. Rogan is moving ahead anyway. He likes to say the plan will transform his agency from a “one-size-fits-all government bureaucracy” to something more like a market-driven private enterprise.
“We want to run this place like a business in every single way except one: profit,” he said in an interview last week. “I don’t want this office to make one penny of profit. We’re not profit-driven; this is a service organization. We want our customers to tell us what they need from us.”
He smiled and added: “Even if we made a profit, I don’t think we’d see it anyway. Congress wouldn’t let us keep it.”
The plan is based on some fairly obvious ideas. Above all, it says the agency must “go back to the basics” and process patent applications without mistakes, or redundant or unnecessary work. Doing so is supposed to save sufficient money — nearly half a billion dollars through 2008 — that it will cover the cost of new programs and new employees. The patent office would accomplish this by making procedures “simpler, faster, more accurate,” “listening more closely” to customers and “being more productive,” the plan says.
Other goals include restoring the patent-pending period to the average of 18 months that it briefly reached in the early 1990’s as opposed to the current 2 years; responding to applications within six months instead of a year; reducing the backlog by 75 percent; ensuring that issued patents can withstand scrutiny and legal challenges; and ultimately, creating a paperless agency.
Mr. Rogan hopes to accomplish much of that by discouraging inventors from filing applications with hundreds or even thousands of claims, each elaborating how a chemical, mechanical or electrical invention works.
“A lot of filers throw everything at the wall, just to see what will stick,” he said. “There’s a subculture of the patent world that says, `Let’s overwhelm the examiner and see if he just lets it go.’ ”
Whether the examiners capitulate or, overworked, simply make too many mistakes, Mr. Rogan says excessive claims not only slow patent processing but contribute to poor-quality patents.
“We spend an inordinate amount of time trying to clean and separate, which the applicants should have done in the first place,” he said.
In 1998, the agency sparked an uproar among inventors and intellectual property specialists when it proposed a flat limit on the number of claims. The plan died, but now Mr. Rogan is tackling the same problem with a sliding scale of fees for applications with more than 20 claims. (The figure was chosen, he said, because the average number of claims accepted by examiners is just 17.)
“We’re moving to free-market principles,” he explained. “The more you want to claim, the more you have to pay. The more work you make us do, the more we’ll charge you. The more judicious you are in submitting claims, the more we want to reward you with better and faster service.”
As simple as the ideas are, carrying them out will require overcoming government bureaucracy. So in the name of “agility” — the plan’s term for one of three main strategic thrusts — the Patent Office is stressing two unprecedented new policies. One is allowing patent applications to be filed electronically. The other is farming out to contractors the researching of so-called prior art — determining whether similar inventions already exist.
Mr. Rogan acknowledged that examiners do not like the idea because some believe it threatens their jobs. “And the customer community gets apoplectic over anything different,” he added.
He was even more blunt about the move to electronic filing.
“People are upset because it’s new,” he said. “Well, I’m real sorry. But we do use e-mail here, we do use computers, and they’re faster, and more secure. We don’t lose paper and files, and we’re more efficient. So that’s the way it’s going to be.”
The second strategy thrust is “capability” and the third is “productivity.” Capability means that the 2,000 or so new patent examiners will be subject to new tests before they are hired. And all examiners and their bosses will be required to undergo training and “re-certification” throughout their careers. Those ideas could meet resistance from the examiners’ union, and they also seem to ensure added layers of oversight, paperwork and procedures.
One way the agency hopes to convince inventors of the new plan is to use carrot-and-stick fees. The basic filing fee will be lower, to compensate for the transfer of prior-art searches to private companies that will impose their own fees. But there will also be a hefty new examination fee, so that the agency’s examiners do not waste time working on applications that inventors have filed but no longer care about.
“For all we know, the inventor may be off on his next deal; but under the system now, he doesn’t care because he’s already paid his fee,” Mr. Rogan said. “We go ahead and do the search, the examination and the prosecution. We don’t want to waste our time like that anymore.”