USPTO Acting Director Discusses Patent Quality, Pendency, Harmonisation

At today’s meeting of the “trilateral offices” – the United States, Europe and Japan – Deputy Director of the US Patent and Trademark Office Michelle Lee gave an update of USPTO activities, including improvements in patent quality, patent pendency, and discussions about patent harmonisation.

Lee is in Yokohama, Japan for meetings with the heads of the Japanese (JPO) and European (EPO) patent offices, known as the Trilateral Offices, according to the USPTO. The meeting is also a lead-up to a meeting of the IP5, which includes the Chinese State IP Office (SIPO) and the Korean IP Office (KIPO), to be held in Suzhou, China on 20-22 May.

Lee’s prepared remarks are available here.

As summarised by USPTO: “In her presentation, Lee provided details on the USPTO’s ongoing efforts on enhanced patent quality; the latest statistics on patent examination; progress on adoption of the Cooperative Patent Classification system created in partnership with the EPO; and the continuing success and growth of the agency’s regional offices in Detroit, Denver, Dallas and the Silicon Valley. While meeting with JPO and EPO leadership, Lee is continuing her focus on harmonizing the patent process internationally, making it easier than ever for U.S. innovators to obtain intellectual property (IP) protection abroad.”

Lee highlighted the agency push for patent quality under its Enhance Patent Quality Initiative, which has a three-part focus on prosecution services, customer services, and quality measurement. The office is collecting public comments on the effort. USPTO will host a Patent Quality Summit on 25-26 March.

Lee said that the focus on patent quality in part comes from progress on patent pendency – the time it takes them to process patent applications.

“One reason we can now focus even more intently on patent quality is thanks to the great progress we’ve made over the years on patent pendency,” she said. “As of the end of January, our first office action pendency was down to 18.2 months, down 28 percent from where we were at the time of the passage of the America Invents Act in 2011.  Over that same time period, we’ve managed a 34 percent decrease in traditional total pendency, to 26.8 months.”

She acknowledged the continued backlog of patent applications but claimed progress there too.

“We remain focused on our backlog of unexamined patent applications. Over the last four years we’ve managed a 20 percent reduction in our backlog, despite an average increase in applications of about 4 percent each year. As of last week it was below 600,000,” she said.

USPTO now has more than 8,000 patent examiners, she said, and is “looking to add more this year.”

Lee mentioned international harmonization efforts in the context of IP protection.

“We remain focused on in encouraging strong and accessible IP protection regimes around the world. For example, we were pleased last November to host a Roundtable on International Harmonization of Substantive Patent Law,” she said.

Lee said of that event: “Many representatives from your organizations visited, as well as leaders from other offices around the world. I felt the event provided a great opportunity for a frank exchange of views on key issues, including the scope and definition of prior art, the grace period, novelty and non-obviousness. We’re working with the comments and feedback from that Harmonization Roundtable to further our efforts to identify ‘best practices’ in international patent harmonization, and to strengthen essential work sharing schemes between counterpart offices.”

She also mentioned a USPTO event on trade secrets held in January, and said continued engagement on these issues is expected during the coming year.

The Japan Patent Office on its website recently highlighted a meeting with the European Patent Office in Munich on patent harmonisation.

It states: “EPO Symposium on Harmonisation was held by the European Patent Office (EPO) in Munich, Germany on February 12. Deputy Commissioner Kihara participated in the symposium from the JPO and introduced the results of the international symposium on harmonization of patent systems held in Tokyo in July 2014, titled ‘Tegernsee Symposium focused on the Grace Period.’ Mr. Kihara also discussed the four key issues* related to patent harmonization with the users in Japan, Europe and the United States. Furthermore, a bilateral meeting was held with the United Kingdom Intellectual Property Office (UKIPO) in which Mr. Kihara exchanged opinions with Chief Executive Officer Mr. Alty of the UKIPO.

The footnote indicates that countries remain far apart on some key issues:

^* The four issues of the “grace period”, “18-month publication”, “treatment of conflicting applications”, and “prior user rights” for which the systems greatly differ between countries