Highlights of USPTO Comm'r Dudas' Testimony to Congress

The following was excerpted from "The Patent System: Today and Tomorrow," presented before the United States Senate on April 21, 2005:

• The USPTO issued more patents last year alone (173,000) than it did during the first 40 years of its existence.
• Patent pendency now averages more than two years. Without fundamental changes in the way USPTO operates, average pendency in [some] areas could double by 2008. Moreover, without intervention, the backlog of applications awaiting a first review by an examiner could grow from its current level of approximately 500,000, to over 1,000,000 by 2010.
• The USPTO will implement a new process for handling reexamination proceedings. Our goal is that, by the end of FY 2005, we will have resolved all instances of ex parte reexamination proceedings that have been pending with an examiner for more than two years. Specifically, of the current 1,200 pending ex parte reexamination proceedings, we hope to resolve 420, or over one-third of our current reexamination workload. If we had not undertaken this challenge, the total number of reexaminations pending for more than two years would have risen to 600 by the end of this year. An additional commitment is that, by the end of FY 2005, the USPTO will set a defined time period for all future ex parte reexamination proceedings to be completed before the examiner, and the period will be less than the two years achieved in fiscal year 2005.
• Post-Grant Review has great support among all major patent interest groups, including the bar, technology companies, academicians, and others seeking patent reform. We look forward to working with the Committee in helping it design the most effective and fair post-grant review process.
• We are currently developing the means for making such required education available to all practitioners via the Internet and through Continuing Legal Education (CLE) providers.
• Last year, more than 100,000 of the 355,000 applications filed with the USPTO were iterations of applications that had previously been reviewed by an examiner. That is, more than one-third of the applications received last year were not, strictly speaking, "new." Rather, they represented a form of re-work. Given the ever-increasing workloads we face, it is necessary and appropriate for all to consider whether some restrictions should be placed upon so-called "continuation" practices.
• Currently, about 7 percent of applications present about 25 percent of the patent claims we examine. That is, a minority of applicants (7%) creates more than 25% of the claims-review work. We are considering the possibility of requiring applicants who file these so-called "super-sized" applications to help us by identifying the relevant issues.
• Ensuring such a focused examination is a joint responsibility of the examiner and the applicant. By working to improve the ways that the best, most relevant information comes before the examiner, we will best achieve the goal we all share of high-quality patent grants that have the respect and trust of the entire patent community, both domestically and internationally.
• There is growing anti-IP sentiment internationally – and in some domestic circles. This sentiment has even, in some instances, spilled into the World Intellectual Property Organization (WIPO). In February 2005, we held an inaugural meeting in the United States, which was attended by 20 nations, the European Union, and the European Patent Office. Subsequent WIPO-sponsored consultations resulted in a general statement regarding a suitable work plan for proceeding with patent law harmonization within WIPO. This dual approach will be encouraged for other IP-related issues as well.
• At WIPO, less than $1 out of every $3 goes to the Office of the Patent Cooperation Treaty (PCT). As a result, the United States and a handful of other developed nations effectively are the net donors to the WIPO, while the remaining 174 nations are net receivers. These net receivers are the beneficiaries of the fees Americans pay, which do not go to PCT operations.

Click here for more-extensive information from the Promote the Progress Blog, including materials from the earlier April 20, 2005 House oversight hearing and the April 25, 2005 Senate hearing in the right column of http://www.promotetheprogress.com/.