PTO Asks if More Time Is Needed for Patent Examinations

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By Tony Dutra

Oct. 26 — The Patent and Trademark Office wants the patent community to weigh in on whether it should increase the time examiners spend reviewing patent applications.

A Federal Register notice published Oct. 25 said a lot has changed since the last time the agency looked at the average number of expected review hours. Most recently, the office has initiated an effort to improve patent quality, arguably increasing demands on examiner research and analysis. But the notice also suggests that if higher quality means more time, application costs may go up and final decisions on applications may take longer than they do now.

Three stakeholders appreciated the agency's initiative but told Bloomberg BNA that the balance between time, cost and quality is a difficult one to achieve.

“I am pleased that the USPTO is looking at all aspects of quality and the examiner time necessary for a quality patent is an important component,” Robert L. Stoll of Drinker Biddle & Reath, Washington, and former PTO commissioner for patents, said in an e-mail. “Most of my clients would be willing to pay a little more and wait a little longer to get better patents. But better tools and more training also need to be provided.”

Practitioners hoped the PTO would consider that actions other than adding examination time can also contribute to quality.

“I assume the premise of the question [in the notice] is that there is a balance between examination quality and costs/pendency, such that we ‘can’t have it all',” Courtenay C. Brinckerhoff, a Foley & Lardner LLP patent prosecutor with a focus on chemical, biotechnology and pharmaceutical inventions, said. “While this may be true on an action-by-action basis, I would expect high quality examination to be associated with reduced costs and reduced pendency in the aggregate.”

Brinckerhoff said that longer initial examinations—resulting in high-quality first office actions—should lead to fewer follow-on office actions and less need for applicants to file requests for continued examination (RCEs).

And the PTO's examination fee structure—excess page and claim fees and fees for additional prior art filed after the first action—already takes into account that some applications should require more examination time than others, she said. Examiners should be allotted extra time in those cases, rather than requiring them to meet an aggregate average over their case load.

Pamela Schwartz, president of the Patent Office Professional Association, the union that represents examiners, told Bloomberg BNA that sometimes 40 hours is necessary to give a particular application a quality review. Imposing a 20-hour average puts undue pressure on an examiner, potentially negatively impacting quality and leaving the applicant no option but to file an RCE—for which the examiner gets extra time.

Nevertheless, she said, the overall push for quality—which the union supports—will have an impact. “We're going to need to put added time into the process,” Schwartz said. “I believe it's going to cost more to get this done.”

Written comments are due Dec. 27. The PTO also made a website available for stakeholders to submit new ideas and comment or vote on existing ones.

The office will also conduct roundtables for stakeholders to discuss the topic Nov. 14 at PTO headquarters in Alexandria, Va.; Nov. 29 in its satellite office in Dallas; and at later times to be determined in the satellite offices in Detroit, Denver and San Jose, Calif.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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