U.S. Patent and Trademark Office Working to Improve System, Pinkos Says

April 11, 2007

Robert PostIn the face of the changing needs of patent applicants, increasing technological complexity, and the challenges inherent to an ever-expanding global economy, the U.S. Patent and Trademark Office (PTO) is examining ways to adapt and change for the better, said PTO deputy director Stephen Pinkos. In addition, Pinkos told an audience of Virginia law students last Thursday, the work of the PTO has never been more vital.

"[Intellectual property] is so important to America's economy," Pinkos said, pointing to one statistic that determined the monetary value of American intellectual property to be worth more than $5 trillion — an amount greater than the gross domestic product of any other nation in the world.

Many PTO officials are focusing on how to modify the polices and procedures to adapt to the changing face of technology and the global economy, and how to better accommodate the increasing number of individuals and companies applying for patents, Pinkos said.

"The backdrop to a lot of the discussion that we have on where the U.S. IP system should go is because we want to perfect the system," he said. "It is one that has worked well for over 200 years, and economies are changing, the way patents are litigated is changing, and that has led a lot of people to discuss [the following questions:] What is the perfect system that we could have? What needs to be changed? What needs to be changed in our examination procedure at the office? What needs to be changed in the courts and how things are handled there?"

One of the foremost issues is processing the nearly 400,000 applications for patents the PTO receives each year, Pinkos said.

According to Pinkos, the high number of applications are "generally a good thing; it means that Americans are innovating and coming up with new ideas. Maybe they are not all deserving of patent, and last year [we had] about a 52 percent approval rate, so about half of the applications coming in were getting some form of protection."

As a result, he explained, the PTO is hiring a thousand new patent examiners a year, which can be a daunting managerial task due to the need for intelligent hiring, rigorous training, and effective retention of patent examiners. The PTO is considering going national, so that employees and examiners can work electronically from anywhere in the country.

"We're trying to attack this backlog of over 700,000 patent applications," Pinkos said. [This] means that if we closed our doors and examined everything that was there for two years, we could get through the work, but then we would have about 800,000, 850,000 ready to come back in again, and so it's really hard to keep up. And so we are trying to come up with some new ideas to accelerate the process."

Additionally, certain applicants, such as those in the high-technology field, require a faster application process.

"By the time they might get a patent on their invention, life-cycle on that invention may have passed," he said. "One of the things we are offering applicants is an accelerated examination, where we guarantee you a one-year disposition of your application."

This policy stirred some controversy, Pinkos said, because the accelerated program requires applicants to submit a lot more information so that the PTO can evaluate application more quickly, which potentially subjects the applicant to greater litigation risks. However, Pinkos said, the procedure leads to a more collaborative examination process between the applicant and the PTO, producing a stronger and more definitive examination.

"We're also suggesting ways to reform the application process in the sense that we want to limit the number of continuing applications that folks can file. Basically, there needs to be an endpoint."

According to Pinkos, the public would benefit if the PTO can reduce the large number of applications pending indefinitely, despite the desires of some applicants. The PTO could ask applicants to focus their invention, at least in the initial phase of the examination, on a limited number of claims. Pinkos explained that some applications come with thousands of claims attached to them, which slows down the examination.

With the increasing complexity of technology, Pinkos said, it becomes more difficult for examiners to determine whether new technologies are distinct enough from currently patented technologies to merit a patent. For example, a cell phone can have 150 different patents, making it tough for an examiner to fully appreciate all the issues involved with the application in a limited amount of time.

As a result, the PTO is asking for more participation not only from the applicants, but from third parties. Pinkos argued that parties working on developing products or technologies in related fields need to know if they are going to infringe on someone else's patent, or if they are going to be able to get their own patent. The PTO plans to make information on what it is and is not receiving a patent more accessible.

The PTO is also considering ways for the public to participate in examinations, through a Wikipedia kind of process in which the public could sift through the applications that have been approved and comment on them, providing feedback for examiners.

The PTO is currently working closely with the executive branch to address the issue of international criminal organizations conducting counterfeiting operations, Pinkos said. Counterfeiting creates not only a "disastrous" economic issue, but also poses health and safety concerns as well, considering the kinds of technologies that could be poorly replicated, Pinkos said.

"It's a delicate balance to do what is right for the overall patent system without jeopardizing what has been a wonderful economic success story for the U.S.," he said. "We are working as hard as we can to keep the system updated to respond to changing circumstances."

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