Strategic Objective 2.2
Protect intellectual property and improve the patent and trademark system
This objective focuses on ensuring that the IP system contributes to a strong global economy, encouraging investment in innovation, and fostering entrepreneurial spirit. Achievement of this objective will protect individual rights and innovation in a timely, efficient manner. A discussion of each performance outcome within this objective will further describe the impact of achieving the objective. People worldwide benefit from innovations, both directly on a personal level, and indirectly through economic growth fueled by innovation. Continual development of a vigorous, flexible, and efficient IP system protects individual rights, encourages investment in innovation, and fosters entrepreneurial spirit. The Department promotes the IP system through the protection of inventions or creations via patent, trademark, trade secret, and copyright laws. Under this system of protection, industry in the U.S. has flourished, creating employment opportunities for millions of Americans. The primary services the Department provides within this objective are the examination of patent and trademark applications and dissemination of patent and trademark information. Issuance of patents provides incentives to invent and invest in new technology by allowing innovators the opportunity to benefit from their discoveries. Registration of trademarks assists businesses in protecting their investments and safeguards consumers against confusion and deception in the marketplace by providing notice of marks in use. Through dissemination of patent and trademark information, the Department promotes a global understanding of IP protection and facilitates the development and sharing of new technologies worldwide.
Performance Outcome: Optimize patent quality and timeliness (USPTO)
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| Rating | Results |
|---|---|
| Exceeded Target | 0 |
| On Target | 6 |
| Slightly Below Target | 0 |
| Below Target | 1 |
| See Appendix A: Performance and Resource Tables for individual reported results. | |
The most significant activity under this goal is the examination of an inventor’s application for a patent by comparing the claimed subject matter of the application to a large body of technological information to determine whether the claimed invention is new, useful, and non-obvious to someone knowledgeable in that subject matter.
Providing quality services and products is USPTO’s foremost priority. USPTO’s commitment to the continuous refinement and expansion of the quality initiatives is outlined in the 2007-2012 Strategic Plan. Patent examinations are subjected to both end product and in-process reviews that evaluate the quality of the substantive basis for examiner decisions, applicability of publications found by the examiner or the quality reviewer searched cases, evidence, and clarity of communications with applicants. Findings produced by these reviews are shared individually with examiners, collected in a database for ongoing analysis, serve as the basis for the development of training programs, and used to strengthen the review process. Beginning in late 2006, USPTO commenced an intensive effort to better define quality and identify appropriate criteria to gauge quality.
This effort has culminated in plans that will ensure examiners maintain the knowledge and skill levels necessary to perform quality examinations through training and the administration of certification exams.
In January 2006, USPTO launched an academy approach to training entry-level patent examiners aimed at graduating examiners sufficiently skilled to produce quality examinations with reduced oversight. New employees are given in-depth training for up to eight months that combines technical and legal instruction, practical applications, small group study, and one-on-one assistance with real applications. The goal is for competency to improve and attrition of new hires to decrease. A total of 1,727 examiners received training in the Patent Academy in FY 2007.
Two of the measures USPTO uses to gauge patent quality are the patent allowance compliance rate and the in-process examination compliance rate. The patent allowance compliance rate is the percentage of applications allowed by examiners with no errors after being reviewed by the Office of Patent Quality Assurance. An error is defined as at least one claim within a randomly selected allowed application that would be held invalid in a court of law if the application were to issue without the required correction. In FY 2007, efforts to improve quality resulted in an allowance compliance rate of 96.5 percent, slightly better than the target of 96.0 percent.
The in-process examination compliance rate is a ratio derived from the number of office actions void of deficiencies that would significantly impact the applicant’s ability to advance the prosecution on the merits of the application, divided by the total number of office actions reviewed. At 92.2 percent in-process examination compliance, USPTO met its goal of 90.0 percent.
The Office of International Relations (OIR) leads the U.S. government delegations to the World Intellectual Property Organization’s (WIPO) meetings. OIR developed the proposals and led the negotiations for the Patent Cooperation Treaty (PCT) changes that have resulted in a dramatic reduction in PCT Chapter II processing. The implementation of the PCT Guidelines for Search and Examination has led to improvements in the processing of PCT applications. Because Chapter II demands have dropped, examiner time has been freed up to dedicate to other aspects of the patent workload.
The time to process a patent application is measured in two ways: (1) first action pendency—the average time in months from filing until an examiner’s initial determination is made of the patentability of an invention, and (2) total pendency—the average time in months from filing until the application issues as a patent, or is abandoned by the applicant.
USPTO strives to meet its goals of reducing pendency through a multi-pronged approach that includes hiring sufficient numbers of new examiners, retention of experienced staff, competitve sourcing where appropriate, exploring work sharing with other patent offices, process reform through revised rules of practice and training. In FY 2007, 1,215 new patent examiners were hired.
Despite USPTO’s significant efforts and successes, reducing the length of time for action on patent applications continues to be a key challenge. While the rate of increase for total pendency time slowed in FY 2007, the rate of increase for first action pendency did not. USPTO did not meet its target of 23.7 months (actual of 25.3 months) because there were additional older applications processed than planned. The number of patent applications filed increased by 73 percent between 1995 and 2005 and this trend is expected to continue, reflecting the Nation’s strong participation in global business growth and innovation. The Department is committed to achieving long-term reductions in pendency through a combination of hiring, retention, training, and process optimization.
Patent efficiency measures the relative cost-effectiveness of the entire patent examination process over time, or the efficiency with which the organization applies its resources to production. The cost is calculated by totaling all costs (including direct and indirect) incurred to produce a patent product and dividing the sum by the number of product outputs. The FY 2007 target of $4,253 was met with an actual of $3,961.
The public Patent Application and Information Retrieval (PAIR) system offers the public an advanced electronic portal for PDF viewing, downloading, and printing an array of information and documents for patent applications not covered by confidentiality laws. Public PAIR also offers a quick-click feature for ordering certified copies of patent applications and application files. The private PAIR system allows applicants access to the file history of their applications.
In March 2006, USPTO fully deployed an enhanced electronic filing system (EFS-Web). The system was designed with extensive applicant input to improve the ease of e-filing. E-filing reduces errors and expedites processing by eliminating the scanning and indexing required for paper applications. USPTO met its FY 2007 goal of 40.0 percent of patent applications filed electronically, by achieving a rate of 49.3 percent (estimated, final by December 2007).
Additionally, USPTO completed the conversion of all paper applications to electronic form, providing desktop access to patent applications by all examiners, support, and management personnel. USPTO has met its target of electronically managing 99.9 percent of patent applications. In FY 2007, USPTO enhanced its telecommuting program to remotely provide patent examiners with full access to all patent systems necessary to perform their jobs from home, and added collaborative communication technologies. More than 1,000 patent employees now participate.
OIR continues to develop worksharing initiatives with other patent offices. OIR is part of the USPTO team addressing work sharing initiatives and pilot projects with other major patent offices. Work continues with the European Patent Office (EPO) and the Japan Patent Office (JPO) on work sharing initiatives, with the Patent Prosecution Highway having come online between JPO and USPTO. Successful worksharing will significantly and positively impact the timeliness of patent application processing.
A Memoranda of Agreement (MOA) with EPO and JPO on joint projects was signed. USPTO continuing trilateral efforts on practice issues, worksharing, and examiner exchange initiatives will ultimately lead to improved quality at USPTO. With regard to e-government, e-filing and processing, the ongoing Trilateral and WIPO/SCIT (Standing Committee on Information Technologies) objectives of developing common, compatible, and “interconnectable” tools for electronic filing, processing and access will serve to greatly advance the efficiency of processing patent applications in the United States and throughout the world and of communicating among industrial property offices. This is especially true of the “common application format” initiative within the Patent Trilateral.
| Rating | Results |
|---|---|
| Exceeded Target | 0 |
| On Target | 8 |
| Slightly Below Target | 0 |
| Below Target | 0 |
| See Appendix A: Performance and Resource Tables for individual reported results. | |
The fundamental process involved in reaching this outcome is the examination of trademark applications. Trademark attorneys determine registrability under the provisions of the Trademark Act of 1946, as amended. The examination of trademark applications comprises many elements, including the utilization of electronic databases to determine whether the mark in an application is confusingly similar to any pending or registered mark, the preparation of an office action to inform applicants of the attorney’s findings, the approval of applications to be published for opposition, and the examination of Statements of Use filed under the Intent to Use provisions of the Trademark Act.
A vital component of USPTO’s commitment to improve the quality of examination is the identification of criteria used to assess the quality of an office action. In order to determine trademark examination quality, first and final examiner search results and actions are evaluated to create a more comprehensive and rigorous review of what constitutes examination quality. More than 350 items are scrutinized to determine “excellent,” “satisfactory,” and “deficient” work with regard to the examiner’s research, critical analysis of the application, and the writing of the office action. The examining attorneys’ handling of every substantive and procedural issue is also analyzed comprehensively. These more rigorous criteria have been used to measure quality for the past two years. As a result, the quality of the examiners’ work has demonstrably improved.
In FY 2007, the trademark first action compliance rate was 95.9 percent, above the 95.5 percent compliance target. Similarly, the final action compliance rate was 97.4 percent, also better than the 96.0 percent target.
As part of USPTO’s commitment to improve the quality of examination and ensure that all examiners possess the knowledge, skills, and abilities necessary to perform at the highest level, examiners are required to take a series of e-learning tutorials. The quality review process allows USPTO to conduct training on the micro level with specific feedback, and also on the macro level with training modules that address trends, targeting topics that warrant improvement.
The two primary measures used to determine trademark application processing time are (1) first action pendency, which measures the average time, in months, from the filing date to when the examiner’s first action is taken; and (2) final action pendency, which is based on the average time, in months, from the filing date until the notice of abandonment, notice of allowance, or registration for applications based on use. USPTO met its FY 2007 target, 3.7 months, by achieving a first action pendency of 2.9 months. Trademark final action pendency results were 13.4 months, excluding suspended and inter partes cases, and 15.1 months including all cases in FY 2007. USPTO met its FY 2007 target of 15 months excluding suspended and inter partes cases, and 17.3 months including all cases.
The measure of trademark efficiency is calculated by dividing total USPTO expenses associated with the examination and processing of trademarks (including associated overhead and supporting expenses) by outputs (office disposals). The measure indicates the degree to which USPTO can operate within plan costs relative to outputs produced. The FY 2007 trademark efficiency target of $685 was met with an actual of $660.
The strategic plan outlines USPTO’s commitment to working with its IP partners to improve the efficiency of its processing systems. The number of applications and communications received and processed electronically has continued to increase and has resulted in more coordinated and streamlined work processes. The continued expansion of electronic file management, when combined with internal process mapping, will allow a more efficient design and control of the work process, provide tools to monitor and better manage the work, measure production and timeliness, and evaluate quality. This greater reliance on electronic systems will, in turn, prepare USPTO for the globalization that characterizes the 21st century economy.
The public may access official trademark files online within days of filing by using the Trademark Document Retrieval (TDR) system. This system grants access to the full file contents of all federally registered and pending trademarks in an electronic PDF format. TDR contains nearly two million pending and registered trademarks dating back to 1885, and represents more than 100 years of marketing creativity. TDR enables the public to download and print an array of information and documents. By allowing public access to interested parties, USPTO is better able to provide timely and useful information to business owners as they develop their marks and prepare to file trademark applications.
The office reached a milestone—more than one million applications have been filed electronically since electronic filing was first piloted nine years ago. The office met the goal for 90.0 percent of trademark applications to be filed electronically by receiving more than 95.4 percent of the applications to register a mark electronically. The trademark electronic filing system has been enhanced by continuing to expand the number and type of transactions that can be completed online and by offering reduced fees to encourage electronic communications. Twenty-five electronic forms are available through the award winning Trademark Electronic Application System (TEAS). Options for reduced fees, system enhancements, PDF attachments, and the availability of forms that permit more electronic transactions have encouraged greater use and acceptance by trademark customers to the point where electronic filing has become the preferred method for communicating on trademark matters. USPTO has consistently met its target of electronically managing 99.0 percent of trademark applications.
OIR continued the Trademark Trilateral work on the identification of classifications for goods and services which should further reduce trademark pendency, as applications, especially those filed from abroad, will be more focused for examination in the United States. The Trademark Trilateral and WIPO/SCIT objectives of developing common, compatible, and “interconnectable” tools for electronic filing, processing, and access will serve to greatly advance the efficiency of processing trademark applications in the United States and throughout the world. The OIR trademark team conducted electronic processing training for trademark examiners in Jordan and the Philippines.
| Rating | Results |
|---|---|
| Exceeded Target | 3 |
| On Target | 0 |
| Slightly Below Target | 0 |
| Below Target | 0 |
| See Appendix A: Performance and Resource Tables for individual reported results. | |
USPTO continues to work with its IP partners as well as its applicant public to improve its processing systems. Significant progress is being made in the transitioning of its patent and trademark operations to an e-government environment. Currently, all federally registered and pending trademarks are available to the public on USPTO’s Web site, www.uspto.gov. On USPTO’s Web site, a variety of tasks can be accomplished, including filing electronically for patents and trademark registration, reviewing the status of current applications as needed, tracking the status of a public patent application as it moves from pre-grant publication to final disposition, and reviewing the documents in the official patent application file, including all decisions made by patent examiners.
USPTO’s Office of External Affairs (EA) plays a critical role in the U.S. government’s efforts and obligations to provide IP technical assistance throughout the world. In FY 2007, there were 461 instances in which EA experts reviewed IP policies and standards; 17 instances where EA improved worldwide IP expertise for U.S. government interests; and 15 instances where EA initiated or implemented plans of action, mechanisms, or support programs in developing countries.
EA’s mission is to promote development of IP systems internationally. Some recent initiatives include collaborating with counterparts in the Chinese government to improve China’s intellectual property rights (IPR) administration and enforcement, placing IPR experts in six countries to support Embassy and Consulates on all IPR issues, and establishing USPTO Global Intellectual Property Academy (GIPA) to expand IP training, technical assistance, capacity programs, and activities for foreign government officials. 77 GIPA training programs have been conducted during FY 2007.
EA also manages a hotline (1-866-999-HALT) that helps small and medium-sized businesses leverage the resources of the U.S. government to protect their IPR in the United States and abroad. Callers receive information from a staff of IP attorneys at USPTO with regional expertise on how to secure patents, trademarks, and copyrights, and on enforcement of these rights. In FY 2006, the hotline received 1,460 calls. In FY 2007, USPTO received 1,730 calls through the hotline.
In support of U.S. Trade Representative (USTR) and other U.S. government agencies, USPTO plays a key role in the negotiation and drafting of IP provisions of free trade and other international agreements. These provisions generally require U.S. trading partners to provide stronger, more effective protection for IP than is required under World Trade Organization’s (WTO) Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement. USPTO has participated in numerous negotiating rounds and/or implementing legislation for all recently concluded and ongoing free trade agreements (FTA).
In 2007, USPTO submitted the 2007-2012 Strategic Plan. The new plan builds on the infrastructure developed in the 21st Century Strategic Plan and outlines specific strategies to meet the goals of optimizing patent quality and timeliness, and improving IP protection and enforcement domestically and abroad.
Strategies to reduce patent pendency and improve patent quality include enhanced recruitment to hire 1,200 new examiners a year for an extended period of time, establishment of a retention bonus program, increased training for new and existing examiners, and the creation of partnerships with universities to groom examiner candidates and increase knowledge of the patent system. Hiring alone will not achieve significant reductions in pendency without accompanying changes to the current one-size-fits-all system of examination. USPTO will, in collaboration with stakeholders, explore the feasibility of offering alternatives to better meet the differing needs of applicants, and more efficiently utilize the Agency’s resources.
USPTO will continue to improve and integrate existing electronic systems to promote full electronic patent application processing. This will involve promoting the utilization of electronic text content to facilitate the examination process and increase user acceptance of electronic filing systems. USPTO will provide applicants with expanded opportunities to conduct business with USPTO electronically. USPTO will continue to expand patent examiners’ opportunities to participate in the telecommuting program at the rate of more than 500 additional employees annually.
Multiple initiatives will be implemented to improve quality. Examples of quality improvements include involving external stakeholders in defining quality and developing quality metrics and performance targets, assessing the existing process for reviewing examiner work, and externally validating quality data.
USPTO will transform patent appeals and interference processing and workload, and enrollment and discipline functions. This effort will entail enhanced communication and involvement with registered patent practitioners and improvements in the Agency’s responsiveness.
USPTO will continue to work on curbing IP theft and strengthening IP protection and enforcement in every corner of the globe. More IP experts will be posted in foreign countries where U.S. IP challenges are the greatest. Training and assistance programs will continue to combat and deter infringement and promote honest business practices in the use and development of IP. In addition, USPTO will continue its intensive national public awareness campaign to help educate small and medium sized businesses, in which participants learn what IPR is, why it is important, and how to protect and enforce these rights.
Achieving the outcome of optimizing patent quality and timeliness presents a broad spectrum of challenges. Congress and the public have recognized that the time it takes USPTO to reach a final decision on a patent application directly impacts U.S. competitiveness. A critical component to achieving the goal of timely, high-quality examinations entails the hiring and retention of more patent examiners. Unfortunately, USPTO must compete with other employers to attract and retain the most talented and sought after individuals.
Optimizing quality first requires accord between USPTO and applicants on the definition of quality and how to measure it. To maintain the U.S. system as the best patent examination system in the world, USPTO must provide applicants with products that protect their IPR while simultaneously facilitating efficient use off USPTO resources. Leveraging new technologies in pursuit of efficiency requires a vision of the examination processes of tomorrow.
Addressing many of these challenges requires an interrelated approach to ensure that the solution to one challenge does not hamper the remedy of another. USPTO’s updated 2007–2012 Strategic Plan provides a set of focused initiatives to ultimately produce solutions to the challenges noted above.
Increasing public awareness of various IP issues and interests and how these affect them is an important aspect of USPTO’s role. Educating the public about the examination processes of USPTO and how these relate to the use of IPR in the marketplace will help in that process. Communicating with and informing the public about the intersection of IP issues and the news stories they read everyday will help to generate a better understanding of the role of such rights in the global economy. Promoting an understanding that the violation of IPR affects everyone, and how, will be beneficial to improving the effectiveness of the system as a whole.