# Presentation: 693158

## THE STATE OF THE PATENT SYSTEM
BACKGROUND FOR RULE PROPOSALS
Los Angeles Intellectual Property Law Association
“Washington and the West” Conference
January 25, 2006

**BACKGROUND FOR RULE PROPOSALS**
**Los Angeles Intellectual Property Law Association**
**“****Washington and the West” Conference**
**January 25, 2006**
**	****	****	****	****	****	**

## UPR Applications Filed

**FY 05 plan 375,080  ****(5.5% above FY 04) **
**FY 05 actual 384,228 (8.1% above FY04)  **
**2.6% over plan**

** **FAOMs in FY05

## TC Application Inventory

|  | 1600 | 1700 | 2100 | 2600 | 2800 | 3600 | 3700 | Total* | Design |
| --- | --- | --- | --- | --- | --- | --- | --- | --- | --- |
| New Applications1 9/30/2004 | 55,402 | 63,923 | 71,778 | 97,380 | 77,651 | 56,738 | 65,005 | 508,878 | 18,451 |
| New Applications1 9/30/2005 | 62,644 | 72,697 | 76,529 | 115,585 | 94,425 | 70,354 | 83,225 | 586,580 | 24,534 |

**TC Application Inventory**

- 1 “New Application inventory” is the number of new applications designated or assigned to a technology center awaiting a first action.
- *Total inventory includes applications not assigned to a particular TC, awaiting processing either pre- or post-examination.

##  Patent Pendency(as of 1/1/2006)

| Technology Center | Average 1st Action Pendency (months)1 | Average Total Pendency  (months)2 |
| --- | --- | --- |
| 1600 - Biotechnology and Organic Chemistry | 23.3 | 33.5 |
| 1700 - Chemical and Materials Engineering | 20.6 | 29.8 |
| 2100 - Computer Architecture Software and Information Security | 33.1 | 44.8 |
| 2600 – Communications | 31.2 | 43.9 |
| 2800 - Semiconductor, Electrical, Optical Systems | 15.0 | 25.0 |
| 3600 - Transportation, Construction, Electronic Commerce | 19.8 | 27.5 |
| 3700 - Mechanical Engineering, Manufacturing and Products | 18.6 | 26.6 |
| UPR Total (as of 10/1/2005) | 21.8 | 30.6 |

- 1** **“Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005.
- 2** **“Average total pendency” is the average age from filing to issue or abandonment of a newly filed application, completed during October-December 2005.

## First Action Pendency by Art Areas

| High Pendency Art Areas | Pendency1 (months) | Low Pendency Art Areas | Pendency1 (months) |
| --- | --- | --- | --- |
| 1640 – Immunology, Receptor/ Ligands, Cytokines, Recombinant Hormones, and Molecular Biology | 27.7 | 1620 – Heterocyclic Compounds and Uses | 16.9 |
| 1743 – Analytic Chemistry & Wave Energy | 30.8 | 1752 – Radiation Imagery | 12.1 |
| 2123 – Simulation and Modeling, Emulation of Computer Components | 39.7 | 2125 – Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control | 20.0 |
| 2617 – Interactive Video Distribution | 50.4 | 2651 – Dynamic Information Storage & Retrieval | 16.1 |
| 2836 – Control Circuits | 24.3 | 2833 – Electrical Connectors | 8.8 |
| 3628 – Finance & Banking, Accounting | 52.1 | 3612 – Land Vehicles | 12.0 |
| 3731 – Surgery: Cutting, Clamping, Suturing | 30.9 | 3723 – Tools & Metal Working | 10.9 |

**1**** **“Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005.

## Inventory by Art Examples

| High Inventory Art Areas | Months of Inventory* | Low Inventory Art Areas | Months of Inventory* |
| --- | --- | --- | --- |
| 1614, 1615, and 1617 – Drugs, Bio-affecting and Body Treatment | 38-51 | 1620 – Organic Chemistry | 15 |
| 1753 – Radiation Imagery | 34 | 1734 – Adhesive Bonding and Coating Apparatus | 10 |
| 2127 – Computer Task Management | 46 | 2125 – Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control | 10 |
| 2611 – Interactive Video Distribution | 114 | 2651, 2653 – Information Storage and Retrieval | 12 |
| 2836 – Control Circuits | 22 | 2831 – Electrical Conductors | 8 |
| 3620 – Business Methods | 22-136 | 3651 – Conveying | 12 |
| 3731 and 3737 – Medical Instruments, Diagnostic Equipment | 38-47 | 3742 – Thermal and Combustion Technology | 8 |

- *The number of months it would take to reach a first action on the merits (e.g., an action addressing patentability issues) on a new application filed in July 2005 at today’s production rate.  Today’s production rate means that there are no changes in production due to hiring, attrition, changes to examination processing or examination efficiencies, and that applications are taken up in the order of filing in the given art unit/area.  Of course, USPTO is taking aggressive steps to ensure changes that will significantly lower the inventory rates in high-inventory art areas.

## Quality of Products – FY 05

|  |  | Fiscal Year 2005 |  |  |  |  |  |  |  |  |  |
| --- | --- | --- | --- | --- | --- | --- | --- | --- | --- | --- | --- |
| 	 | FY 04 | 1600 | 1700 | 2100 | 2600 | 2800 | 3600 | 3700 | Design | FY 05 | FY 05 Target |
| Patent 
In-Process Examination Compliance Rate1* | 82.0% | 81.7% | 82.9% | 88.1% | 84.7% | 90.9% | 84.4% | 86.6% | 94.3% | 86.2% | 84.0% |
| Patent Allowance Error Rate2* | 5.32% | 4.88% | 6.46% | 3.56% | 2.25% | 4.43% | 4.94% | 6.43% | 1.6% | 4.55% | 4.0% |

***Compliance and error rates as measured by OPQA.  **

- 1Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution).
- 2Patent allowance error rate is the percent of allowed applications reviewed having at least one claim which is considered unpatentable on a basis for which a court would hold a patent invalid.  “Allowance” occurs before a patent is issued, so these errors are caught before any patent is actually granted.

## Technology Centers Rework* Statistics

***  Rework first actions are those actions that are in a Continuing (CONs and CIPs), RCE, CPA or 129(a) applications (excludes Divisionals).**

## Continuation Filing Rates

**As of 10/24/2005**

## Continuation Filing Percentage

**As of 10/24/2005**

## APPEAL PENDENCYFY01 – FY05

**Inventory**

**Time to Decision**

## Appeal Conference Initiatives

**Pre-Brief Appeal Conference Pilot Program**
**1296 *****Off. Gaz. Pat. Office***** 67 (July 12, 2005)**
**The USPTO is extending the program until further notice.  **
**Appeal Conferee Specialists Pilot Program**

## Average Number of Claims at Filing 

## Rule Makings on Representative Claims and Continuing Applications

**Objectives:**
**Better focused examination – help us get it right the first time**
**Create greater finality in examination:**
**To help the Office turn to new inventions and create public certainty on patent protection**

## Slide 15