Shifting Gears: The PTO Considers A Three-Tiered Patent Examination System

Article Date: Thursday, November 04, 2010

Written By: Ira Knight

On June 4, 2010, the United States Patent and Trademark Office (“PTO”) requested comment on implementation of a proposed multi-track patent examination system. See Federal Register Notices of June 4, 2010, http://frwebgate.access.gpo.gov/cgi-bin/getpage.cgi?position=all&page=31763&dbname=2010_register (last accessed Sept. 29, 2010). Currently, patentees generally have only one patent examination track in which to apply for a patent; however, the PTO is considering giving patentees three different patent examination track choices. The first track will allow applicants to have their patent examined in less than a year in exchange for a heavily increased application fee. The fee will be high enough to provide for an increased number of staff members to handle the expedited examination process. The second track will be similar to the current system.

The third track will allow applicants to delay the patent examination process for up to an additional 30 months.
Since publication of the PTO’s request for comment, the internet has been atwitter  with patent attorneys’ opinions addressing the proposed changes. This quick response by the community is due in part to the overwhelming need for the reduction of the massive patent application backlog. Currently, about three-quarters of a million patent applications are in a sort of waiting line and considered “backlogged.” See Choose-Your-Own-Adventure: A Multi-Track Patent Examination System by Dennis Crouch, June 3, 2010, available at http://www.patentlyo.com/patent/2010/06/choose-your-own-adventure-a-multi-track-patent-examination-system.html (last accessed Sept. 29, 2010).

Even prior to the PTO’s announcement, some patent attorneys had already considered a multi-track or multi-tiered approach to examination. University of Richmond law professor Kristen Osenga, for example, recently published an article critically addressing the issues she has with the PTO’s proposed method of multi-track examination. See Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Dierction, 2010 Patently-O Patent L.J. 89, available at http://www.patentlyo.com/osenga.pdf (last accessed Sept. 29, 2010).

Osenga’s article first gives a quick and dirty breakdown of her prior, more detailed article, which proposed a three track approach to patent examination that differs from the PTO’s proposed method. Osenga admits that the multi-tiered structure is the way to go, but she doesn’t believe the PTO’s reasoning that giving patent-seekers time to lose interest in their applications and thus resulting in abandoned patent applications is correct or helpful. Osenga writes that large companies that collect patent “portfolio fiber” are motivated solely by the end result of obtaining patents and the prestige that patents bring therewith, and therefore those patent seekers will not “drop out” of the application process. This may be further supported by the fact that the vast majority of patents will never be litigated such that one may assume that collecting “portfolio fiber” is a driving force in developing intellectual property for many companies. See for example, What Are My Chances? From Idea Through Litigation, available at http://library.findlaw.com/2003/Oct/16/133092.html (last accessed Sept. 29, 2010) (Only about 1% of issued patents are litigated).

Other writers have analyzed the PTO’s proposal as well. Dennis Crouch of PatentlyO.com has written that the third track could address a segment of the patent seeking population that significantly contributes to the PTO patent backlog. He points to non-urgent inventions that have a patent filed before a market develops for the product as a good example of backlog flotsam. See Multi-Track Examination: Enhanced Examination Timing Control Initiative, by Dennis Crouch, June 6, 2010, available at http://www.patentlyo.com/patent/2010/06/multi-track-examination-enhanced-examination-timing-control-initiative.html (last accessed Sept. 29, 2010). These non-urgent inventions seemingly benefit from an examination backlog by stringing out and delaying the examination process. A multi-track system would allow these applicants to delay examination while at the same time allowing urgent patent seekers to skip out of the backlog.

Those who skip in line to enter the first examination track will be met with an increased fee, which will be needed by the PTO to maintain the first examination track. This proposed system, coupled with the PTO’s stated desire to hire 1,000 additional patent examiners shows it acknowledges the difficulty in backlog elimination. I believe that the PTO is headed in the right direction with introduction of this tiered examination process and by bringing new examiners on board, and it is taking a step toward reduction of the patent backlog.

Ira Knight is a third year law student at the Wake Forest University School of Law. Mr. Knight has an interest in pursuing a career practicing intellectual property law after graduation. Mr. Knight thanks Thanh Ngo for her editorial advice.

Portions of this article originally appeared in the Wake Forest Intellectual Property Law Journal Blog, which can be found at http://ipjournal.law.wfu.edu/blog/ . Web site content or other published materials owned by the Wake Forest IPLJ may not be used without written confirmation from the Wake Forest IPLJ that Copyright Permission has been granted.

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