Optimizing the USPTO to Boost Growth

June 2011

The United States Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), David J. Kappos, explains what the USPTO is doing to ensure that groundbreaking ideas reach the market quickly.

The economic vitality of the United States has always been deeply rooted in innovation. The country was built on a pioneering spirit that gave birth to inventors who developed the light bulb and cures for diseases; who built railroads and led the world into the age of flight; and who have more recently transformed business and communications through the power of information technology (IT).

David J. Kappos, United States Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office (USPTO) (Photo: USPTO/David Snider)

As we and other countries around the world continue to struggle with the effects of a severe global recession, it is clear that economic recovery will depend on a robust innovative and entrepreneurial environment – one that incentivizes research and development (R&D) in new technologies, and provides greater certainty for those taking innovations to the global marketplace.

Without clear and consistent intellectual property (IP) protection, any invention – no matter how novel, or groundbreaking – can effectively be appropriated and thereby become a royalty-free donation to competitors. In today’s globalized economy, promoting balanced patent protection and enforcement will help stimulate the type of jobs and growth that support efforts to improve living standards and achieve environmental sustainability.

That is why the USPTO is making great strides to optimize the innovation environment, ensuring that technologies spur growth, market competition is balanced and creative genius protected.

Re-engineering systems

The vision of a simplified and streamlined process for acquiring IP rights began with an overhaul of the antiquated “count system,” for measuring patent examiners’ performance. By convening a joint labor and management task force, the USPTO created a new system of incentives that affords examiners more time to review applications before issuing first-actions. The re-engineered system also established new channels of communication with patent applicants, encouraging an open dialogue about applications that boosts the efficiency and quality of the review process.

The office then established a three-track examination program allowing applicants to determine the pace at which their ideas are reviewed. A company in urgent need of IP protection can opt for an accelerated review for a fee, and for ideas that require longer incubation a slower track is available.

This program gives the innovation community the tools to tier priorities and help manage the patent backlog.

While recent budget decisions have hampered the rolling out of the Track 1 program as early as planned, all available structural and procedural resources are being put in place to offer it to the public as soon as budgets permit.

Irrespective of these challenges, the program reflects the USPTO’s view that we live in an age in which technological change can affect businesses in an instant.

The onus is to create a smart, agile and enforceable patent and trademark architecture that can adapt to evolving business needs and leverage modern tools to address them. As the technologies the USPTO confronts become more complex, the IT systems that support its work must become more capable.

Adjusting to changing realities

Historically, when innovative products and services were introduced to society, it was fairly easy to conceive of them as stand-alone tools specific to a market, niche or industry. Vaccines were largely biological, engineering devices largely mechanical and telecommunications products largely electronic. As we continue to seed new ideas, and as industries continue to leverage cutting-edge discoveries in the basic sciences, it is clear that the next generation of innovation will be cross-disciplinary. Great new products have one foot in bioscience, another in software, and yet another in nano-tech. These kinetic realities demand intelligent engagement and a smarter infrastructure to keep up.

Ensuring generation-changing ideas can reach markets quickly requires 21st century IT systems. Acknowledging that urgency, the USPTO is enhancing its IT capability.

Last year we received around 35,000 petitions for patent operations. Many thousands waited for months until USPTO staff could process them. That has changed with the recent introduction of a web-based, fully automated system enabling instant grants in many petition categories. The new system offers fast service, moves requests along in seconds and makes better use of patent examiners’ time by allowing them to focus on higher value work.

Developing a better IT system for the office also requires equipping stakeholders with the tools and information to make everyone’s lives easier. That means optimizing the speed and accuracy of search tools and establishing a community wiki to enable office staff, practitioners and applicants to share, update and retrieve the information they need. As the Manual of Patent Examining Procedure and the Trademark Manual of Examination Procedure are the blueprints for interacting with the patent office, we have streamlined them and the way updates covering changes to the law are made and shared with users.

We are pleased to see that WIPO is testing E-PCT, a new secure online PCT file access system which allows applicants to view their PCT file on screen, to upload and download information and correspond with the International Bureau in a secure way.

Ultimately, we are striving for a 21st century IP system that is smarter, better, faster and stronger for all stakeholders – and one that relieves current stresses.

Automated searches, pre-exam screening portals, an automated workflow for all business transactions, more dynamic image searches and friendlier usability: these ongoing IT projects are components of an office that is serious about modern innovation. The USPTO is committed to building a nuanced IT ecosystem that serves as a springboard to stronger patents.

Piloting Peer-to-Patent

That is why, when tackling issues surrounding the quality of patent examination, we are also harnessing the Internet to improve the patent examination process through the second Peer-to-Patent (P2P) pilot program.

By giving members of the public the opportunity to submit relevant prior art, the scope of examination is widened and the quality of review heightened. Shortly after launching the first pilot, the site, hosted by the New York Law School, received thousands of hits and nearly a thousand pieces of prior art were submitted, Before long, patent offices in other countries followed suit initiating their own peer-to-patent pilot programs.

To harness this momentum, the USPTO launched a second pilot in October 2010, inviting patent applicants in the life sciences and telecommunications fields to participate. In the first six months alone, over 200 applications were received, exceeding the total number netted in the first two-year pilot, and the office is on its way to possibly doubling or even tripling this figure. Presently, we are seeking to broaden participation and scale up the program to create an environment conducive to open-sourced, third party submissions, across all platforms.

While the aim is to heighten the quality of patent examination, we must also grapple with the unfortunate reality that current pendency rates mean thousands of ideas and jobs are lying in wait on the sidelines. Adding to that conundrum, in the past 50 years there have been more technological advancements than in any previous period in history, but with no significant patent reform to keep pace.

Sweeping reforms

In this new century, tomorrow’s economy cannot be expected to take root in yesterday’s infrastructure.

This is why President Obama, Secretary of Commerce Gary Locke and I have been working to build widespread support for comprehensive patent reform, which is now under consideration in Congress.

This patent legislation would enhance the U.S. patent system by offering greater certainty about patent rights, as well as alternatives to expensive litigation when patent rights are disputed. Ultimately, the bill will provide the most sweeping reforms to the U.S. patent system in 60 years – and even, arguably, in 150 years.

Having passed the U.S. Senate with overwhelming support, 95 to 5, and the House Judiciary Committee by a vote of 32 to 3, the proposed reform balances IP rights and makes the USPTO a catalyst for growth. By establishing a First Inventor to File system, patent rights are granted with greater speed and certainty. A more streamlined structure for post-grant challenges will offer fast and cost-effective alternatives to protracted litigation, reducing barriers to growth for small and medium-sized businesses and spurring innovation and jobs.

Through this legislation, the patent office can retain the fees necessary to ensure high quality and timely patent reviews. This is particularly crucial in a world in which economic outcomes truly do turn on the quality and efficiency with which a patent application is reviewed. Adequate resources ultimately make the difference between an effective USPTO that turns ideas into jobs – and one that does not. Passing this legislation would enable it to improve the quality of examinations without adding to the deficit, while also allowing the office to actually use applicants’ fees to do the job it is paid to do in the first place.

In a globalized world, comprehensive patent reform will increase productivity by enabling greater cross-border work-sharing between the USPTO and other patent offices.

This modernized patent infrastructure also levels the playing field for independent inventors and small businesses seeking to participate in the global marketplace – thereby enhancing American competitiveness. To this end, we have embarked on a lively conversation with key trading partners, developing nations and overseas patent offices about ways to harmonize substantive patent norms, to ensure the global patent system accelerates global commercial activity rather than impeding it, as can currently be the case.

But it is also important to clarify that U.S. patent reform is neither about politics nor about imposing one country’s standards on those of others; instead, it aims to ensure the country is doing all it can to create a more efficient IP system, support business, spur economic growth and innovate for the future.

In this pursuit, the goals of patent quality and patent pendency ought not to be seen as mutually exclusive. Reducing the backlog frees up resources for enhancing the scope of patent examination, and for making application review more robust, thereby ensuring the best technologies are available to serve society at large. The package of initiatives and reforms the USPTO is implementing holds both of these goals in high regard and, through collaborative discussion with patent offices around the world, everyone can work to foster tomorrow’s innovation while offsetting the stresses currently affecting the global IP architecture.

Expedited review for green technologies

Sustaining innovative solutions for tomorrow also means focusing on technologies that can address energy concerns for generations to come. That is why the USPTO is proud to help accelerate socially conscious technologies. Under its Green Technology Pilot Program, the review of patent applications involving reduced greenhouse gas emissions, enhanced energy conservation and environmental quality is expedited - at no increased cost to the inventor.

By committing to build a more sustainable energy future, the USPTO seeks to spur innovation and promote green collar jobs that provide the world with alternatives to harmful energy practices.

Government investment in the building blocks of innovation through new infrastructure and research can help to establish an environment ripe for private sector investment and competitive markets in this groundbreaking area.

Enhanced R&D investment, public-private partnerships, and cause-based technologies are essential to 21st century business, and the U.S. Department of Commerce and USPTO are paving the way by creating 21st century business opportunities in the country.

The WIPO Magazine is intended to help broaden public understanding of intellectual property and of WIPO’s work, and is not an official document of WIPO. The designations employed and the presentation of material throughout this publication do not imply the expression of any opinion whatsoever on the part of WIPO concerning the legal status of any country, territory or area or of its authorities, or concerning the delimitation of its frontiers or boundaries. This publication is not intended to reflect the views of the Member States or the WIPO Secretariat. The mention of specific companies or products of manufacturers does not imply that they are endorsed or recommended by WIPO in preference to others of a similar nature that are not mentioned.