Speeding Patent Processing: New Pilots Begin

The folks at the U.S. Patent and Trademark Office are trying to remedy the slow process of patent processing by erasing redundancies and increasing efficiency through various methods, all discussed — but not solved — at a recent roundtable held at USPTO headquarters in Alexandria, Va.

“Our top priority is reducing backlog and addressing pendency concerns, and hopefully maintaining and increasing quality at the USPTO,” says David Kappos, undersecretary of Commerce for intellectual property and UPSTO director.

To do this, the agency has launched a two-year pilot program to create the Patent Process Highway (PPH), which will allow offices to be selective in determining what applications are searched and examined based on prior allowances. It has also introduced the Strategic Handling of Applications for Rapid Examination (SHARE) program to expedite applications whose office of first filing is in the United States. The pilot programs, follow-on efforts of existing projects, began in late January.

Limited Effect

Though BIO has an interest in speeding up patent processes, it’s a limited stake because fewer than 5 percent of its members’ patents are not first filed in a U.S. office, says Hans Sauer, BIO’s associate general counsel for intellectual property.

Biotechnology is “the single biggest nonuser of the PPH,” he says, citing a lack of information available and a lesser need for patents to be rushed into approval.

“Many [biotechnology] applications are ineligible,” Sauer says. “Biotech companies overwhelmingly file U.S. first and are most interested in the U.S. market to begin with.”

BIO acknowledged the benefits of work-sharing programs such as the PPH, but had concerns about giving up claim scope for a “quicker prosecution,” one of the conditions of using PPH.

Also discussed at the meeting was the SHARE program, which would prioritize applications first filed in the United States. Under this program, the application would go one of two ways, says Arti Rai, the USPTO’s administrator for external affairs.

One way would be an application first filed in the United States, which would undergo immediate search and examination, resulting in a patent or an abandonment of the application. If the application was not first filed in the United States, it would await another office’s search and examination work so the USPTO could work on the U.S. patents first.

“There’s an enormous amount of work product that the USPTO could use,” with this system, Rai says. The result, which is beneficial to everyone, is greater efficiency. 

The attendees at the roundtable, including representatives from Johnson & Johnson, Microsoft and IBM, largely agree that a SHARE program would be effective, but BIO has reservations about introducing the program without any other options.

Sauer says the process might not provide enough protections for intellectual property. “All these protective mechanisms, I don’t see available under the SHARE program, even though it could conceivably operate as a way for applicants to delay or speed up their cases in various ways without that public element there.”