Patent office deals with backlog issues

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Praise for David Kappos, the Obama-appointed director of the beleaguered U.S. Patent and Trademark Office, has come often and from many sources.

“A great deal of the shift towards accelerating the issuance of patents has resulted from the appointment of the U.S. Patent Office’s new director, David Kappos,” said Hoffman Warnick LLC partner Michael Hoffman.

The USPTO has worked steadily to reduce a huge backlog with innovative pilot programs, the hiring of additional examiners, expedited patent examination (also called prosecution) and approval, and allowing applicants who file in two countries to use foreign country approval.

Unfortunately, however, the USPTO still faces a backlog of cases that Michigan Lawyers Weekly estimates to be in excess of 700,000 with a process that can take years to finish.

“I think they’re moving in the right direction,” said Albany patent attorney Spencer Warnick, a former USPTO employee and Hoffman Warnick LLC partner.

“The issue is the federal budget cutbacks on overtime, new hiring and the USPTO infrastructure. They’ve got to get the manpower to sit down and work through it.” Another problem for the USPTO is: “It’s a cash cow that is constantly being raided. They need to be able to keep their own money.”

Warnick said innovations such as relying on other worldwide offices in countries such as Japan to approve common filings are a good idea, as is the possibility of opening regional offices instead of relying on the sole Washington, D.C. location.

“They were going to open a regional patent office in Detroit,” Warnick said. “I think that’s a good move and I also thought Upstate New York would be a good location since the area is high up there for patents per capita.”

Rochester-based patent attorney Tracy Jong fears a lack of uniformity in regional patent offices, however.

“It solves some problems and creates others,” said Jong, who is well aware of USPTO shortcomings.

Since the system relies on uniformity, an independent office shouldn’t issue a different result than Washington does. Jong said she’s seen a lack of uniform decisions in State Liquor Offices, for example, and fears the same could occur in an expanded USPTO.

She also sees a lack of uniformity in individual examiners.

“It bothers me that it’s difficult working with patent office examiners that make arbitrary decisions,” she said. “Hiring new people doesn’t necessarily fix the problem. It’s always a training ground for them but they are trying to keep examiners now and attract experienced qualified people into government.

“I personally believe [USPTO] rules are harder now than they were two or three years ago,” Jong continued. “It’s difficult to get through. The test is harder.”

To receive approval an applicant must show that their patent is novel and passes a subjective “obviousness” test in which the applicant “shows they made an actual advancement” and “took a Y in the road. It puts a greater burden on [patent attorneys] and we now need to appeal more examiner decisions,” Jong explained.

Ironically, however, the long patent approval process isn’t necessarily such a bad thing.

The USPTO guarantees approval of a year or less with a more expensive expedited process for applicants and also expedites applications for those over 65 years of age, for green technology and for other especially beneficial patent applications.

“It’s not a perfect system, but we have seen some remedies,” Jong said.