Patent official explains decision to scale back reform plan
Criticism of the patent reform plan led the Patent and Trademark Office to design a "more modest" proposal that will not curtail the average time it takes to approve a patent, the No. 2 PTO official said on Monday.
As a result of acquiescing to patent owners who blanched at the call for dramatic hikes in patent fees and outsourcing of information searches in the 21st Century Strategic Plan, the revised plan will cost $400 million more than the original, PTO Deputy Director Jonathan Dudas said.
When push came to shove, Dudas said he and patent chief James Rogan decided to sacrifice patent pendency, or the average time it to takes to issue a patent. From the user community, Dudas said, we heard that "the office needs to focus first and foremost on quality."
Pendency currently stands at 24 months, Dudas said. But because of a backlog of 420,000 patent applications, it is set to rise to between 44 and 48 months by fiscal 2008 unless changes are made.
When Rogan introduced the reform plan in June, he said he wanted to reduce pendency to 18 months by 2008. But the price of changing the plan to respond to "a great deal of criticism-most of it constructive"-was to raise the five-year pendency forecast to between 26 and 29 months under the revised plan.
The two most controversial changes in the original proposal also would have saved the patent office the most money, Dudas said. In addition to fee increases of almost 70 percent for some applicants, Rogan's plan called for requiring patent applications to conduct their own searches for "prior art," or the information used to show that a claimed invention is truly unique.
Under the revised plan, which Dudas said the PTO is still finalizing, searches would still be contracted to the private sector, but the agency would pick the firms. Currently, PTO examiners conduct such searches with the aide of commercial and government databases.
But Dudas said some fee increases will continue to be a part of the plan. "What we are now reconsidering is a linear system in which fees will rise in line with the associated costs" of processing patents, he said.
And he said the office is committed to "a patentability opinion at 18 months that can be made available to all." That would allow applicants to decide whether to continue the process and give others in the intellectual property community greater certainty about pending applications.
Dudas said Rogan also is committed to making the application process fully electronic. The PTO's trademark-application process is fully electronic, and more than half of those applications are electronically filed.
Dudas also said PTO would defend U.S. interests internationally. "Whenever we find hostility to" U.S. intellectual property or initiatives that are "moving too slowly, we will have to look to our own interests and work bilaterally" or unilaterally, he said.