USPTO Seeks Public Input on Application Pendency


USPTO SealEarlier this month, the U.S. Patent and Trademark Office published a notice in the Federal Register (79 Fed. Reg. 38854) requesting comments from the public regarding optimal patent first action and total pendency target levels.  The Office noted that the current targets for first action and total pendency, which were established with stakeholder input in the USPTO 2010–2015 Strategic Plan, were ten months and twenty months, respectively.

The Office defines average first action pendency (or average first office action pendency) as the average number of months from the patent application filing date until the date a first office action is mailed by the USPTO.  Average total pendency is defined by the Office as the average number of months from the patent application filing date until the date the application either issues as a patent or goes abandoned.

The Office has achieved significant reductions in pendency since the current pendency targets were set.  In particular, average first action pendency has been reduced from 25.7 months in FY 2010 to the current average first action pendency of 18.1 months (a 30% reduction), and average total pendency has been reduced from 35.3 months in FY 2010 to the current average total pendency of 28.1 months (a 20% reduction).

On page 38855 of the notice, the Office sets forth seven issues related to patent application pendency on which the public is invited to submit comments.  Briefly, the Office seeks public input regarding:

1.  Whether the current pendency targets are "the right agency strategic targets for the USPTO, stakeholders, and the public at large";

2.  Whether the Office should measure the percentage of applications that satisfy pendency targets rather than determine the average pendency for all applications;

3.  Whether the Office should consider using technology-specific patent pendency targets;

4.  Whether pendency targets should be tied to PTA provisions (such as the requirement under 35 U.S.C. § 154(b)(1)(A)(i) that a first action be issued within 14 months of the application filing date or national stage commencement date);

5.  Whether the benefits of a prompt first Office action might outweigh the potential concerns of the Office action being issued too quickly;

6.  Whether recent significant case law decisions, adjusted fee levels, and "activity in the global IP arena" might impact pendency; and

7.  Whether there are other activities where pendency or timeliness should be measured and reported (e.g., regarding RCEs).

More complete descriptions of the issues above can be found in the notice.

Written comments regarding optimal pendency targets can be submitted by e-mail to  The deadline for submitting comments is September 8, 2014.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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