Recommendations for Consideration by the Incoming Administration Regarding

THE U.S PATENT AND TRADEMARK OFFICE Sponsored by the U.S. Chamber of Commerce

r

S.

S

:r3. S

S’.jS.

-

çi

Index Page 2

About the U.S. Patent and Trademark Office

Page 3

Executive Summary

Page 5

Improve the quality of U.S. patents

Page 8

Provide adeqi the job

Page 10

Re: p:

resources to do

Page 13 Page 15

ship with

Page 18 Page 21

management iualified undersecretary

Page 23.. Permit applicants to defer patent examination Page 28

Rethink the current fee schedule

Page 30

Enhance efficiency of the examination process by reforming examiner / applicant incentives

Page 32

Contributor Biographies

About the U.S. Patent and Trademark Office For more than 200 years, the basic role of the United States Patent and Trademark Office (PTO) has remained the same: to promote the progress of science and the useful arts by securing for inventors the exclusive right to their respective discoveries for limited times (Article 1, Section 8 of the U.S. Constitution). Under this system of protection, American industry has flourished. New products have been invented, new uses for old ones discovered, and employment opportunities created for millions of Americans. The strength and vitality of the U.S. economy is directIfependent on effective mechanisms that protect new ideas and mvestmentsm innovation and creativity. The continued demand for patents ndcat rks underscores the ingenuity of American inventors and entrep$’iis. Th4K) is at the cutting 47 “. edge of the nation s technological progress and achievementq;

4.h’

The PTO is a federal agency in the Departi’ ent oMbmmerce. Th’PTO occupies five interconnected bu4ngs in Aindria, Virginia Thoffice employs more than 9 000 staff iipport its màj’rfunctions the examination and issuance of patents and the eaiiWâtion and rIstration of trademarks.

\

V

The PTO has evolvedintoa unique governmentagency. Since 1991--under the Omnibus Budget4R’econcilirtion Act (OBRA) of 1i990--the agency has been fully fee fiinded. rimarservices thagency provides include processin patent and trademark distiuirating patent and trademark liIiZhsand v ir 4’ informal] on.” %1 •

•“\

““-

‘

“

‘

“

-‘

‘

4/,

Throuhthe issuance ofpatentsthe PTO encourages technological advanceme,by providinncentires to invent, invest In, and disclose new technology wqldvide. Tb ugh the registration of trademarks, the agency assists businesses, proteçting their investments, promoting goods and services and saferdi4 consumers a ainst confusion and deception in the marketplace. By disminating both patent and trademark information, the PTO promotes an understanding of intellectual property protection and facilitates the development and sharing of new technologies worldwide.

Executive Summary The United States Patent and Trademark Office (PTO) is an agency in crisis facing significant challenges. The most significant obstacles include: • •

• •

A backlog of 750,000 applications awaiting a first action continues to worsen. The likely re-introduction of legislation in the 111th Congress to reform the American patent system which will impose new challenges on the PTO. Making effective and efficient use of a two billidn dllar budget derived solely from user fee revenues. Direciitw more than 9000 employees Althny of wh’om have less than five ‘p years of examining exDerience undera hilily unioni’ed and information-technology-driven work environment. &. . Coordinating domestic programs within an international framework that is intensely divided along North-Souiinë. ()

•

‘

L

•

The table below illustrates the pd interhanges that have evolved over the past 20 years \.c

%\

‘

--.,

/ , 4 Budg

.

-a

,

1988%

1998

2008

New3 atent Aplications Examiners ($ mi1hons)a in the current progrerns to be b) ng ge1ttitude among examiners admany appliçants. Ti.êöncept of quality review is — essentialbut the focus needs to change so that poor, unjustified decisiorie n6imade in tha]Iêged interest of quality. ôIàmp rot dohpetitins to improve accessibility to larger popuThfion of licants(d restore focus on national priorities