Patent Office Proposes Five-Year Strategic Plan For Implementing Changes to the Patent Examination Process

By Nicholas A. Keppel

The U.S. Patent and Trademark Office (PTO) recently made available for public comment a proposed five-year strategic plan designed to foster American innovation and competitiveness at home and around the globe¹. A key challenge driving the PTO initiative is an ever increasing backlog of applications awaiting examination. Currently, patent pendency averages 30 months to issue, and the PTO estimates that by 2011 patent pendency will increase to nearly 34 months to issue. Accordingly, the goals of the PTO's strategic plan are to decrease patent pendency, and simultaneously increase the quality of the patent examination process.

While many of the proposed changes in the strategic plan are internal, organizational changes to the PTO, several of the changes will directly affect patent applicants and the examination process. First of all, the PTO plans to dramatically increase the number of Examiners. The PTO is on target to hire 1,200 new Examiners in 2006 and plans to hire 1,000 new Examiners each year between 2007 and 2012. Additionally, the PTO proposes establishing regional USPTO Offices and overhauling its training program in a drive to hire and, more importantly, retain attractive candidates for new Examiner positions.

Until the new Examiners are absorbed into examination system, however, increasing the number of Examiners alone is not sufficient to decrease patent pendency. Accordingly, and probably more crucial to the examination process, the PTO proposes changes to its current "one-size-fits-all" model of patent examination. Proposed changes along these lines include forming partnerships with Universities, developing a peer review mechanism in which public sector volunteer experts will review published applications and provide prior art, and outsourcing search responsibilities, especially pertaining to PCT applications. The PTO's recently revised accelerated examination program is just one example of moving away from the current model of patent examination².

The PTO recognizes that it cannot, and indeed should not, move away from its current "one-size-fits-all" model of patent examination without public input. Accordingly, the PTO is openly courting input from a wide range of organizations (both national and international), public bodies, and other stakeholders in the examination process, most importantly, from applicants themselves.

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¹ For more details on the PTO's initiative see: http://www.uspto.gov/web/offices/com/strat2007 and http://www.uspto.gov/web/offices/com/speeches/06-56.htm.

² The requirements for the Petition to Make Special Under Accelerated Examination Program are found in form PTO/SB/28 available at http://www.uspto.gov/web/forms/index.html#patent.