How Long Is Too Long (or Too Short) for Patent Application Pendency?

by Foley & Lardner LLP

The USPTO is requesting input on the “optimal” targets for its patent application pendency metrics. The USPTO’s current targets are 10 months to a first Office Action and 20 months to grant or abandonment. The USPTO wants to know if you think these targets too long, too short, or just right, and will consider written comments received by September 8, 2014.

Current Patent Application Pendency Targets

As explained in the July 9, 2014 Federal Register Notice, the current patent application pendency targets were established in the USPTO’s 2010-2015 Strategic Plan, after consulting with stakeholders. The current target for first Office Action pendency is 10 months, and the USPTO has reduced first Office Action pendency from 25.7 months in 2010 to 18.1 months. The current target for total application pendency is 20 months, and the USPTO has reduced total application pendency from 35.3 months in 2010 to 28.1 months.

Optimal Patent Applicant Pendency Targets

Pursuant to the USPTO’s 2014-2018 Strategic Plan, the USPTO seeks to “refine” the pendency targets to “optimal” levels that balance competing interests, such as prompt examination, examiner workload, USPTO production capacity, and patent examination quality.

The Federal Register Notice asks for input on the following points in particular:

  1. Are the current targets the right targets? If not, what would be appropriate targets and why?
  2. Should the USPTO focus on average first action pendency or should the USPTO strive to have a large percentage of applications (e.g., 90 or 95 %) meet the targets?
  3. Should the USPTO focus on agency-wide pendency metrics, or should the USPTO consider pendency at the Technology Center level? If the latter, should pendency targets vary depending on the Technology Center? If so, how and why?
  4. Should pendency targets mirror the time periods of the PTA statute, which gives the USPTO 14 months to issue the first Office Action and 3 years to issue a patent? Should the USPTO develop other pendency targets based on the PTA statute, such as issuing subsequent Office Actions within 4 months of the applicant’s reply?
  5. Under the current first Office Action pendency target of 10 months, a first Office Action might be issued without consideration of “hidden prior art” in the form of a patent application with an earlier filing date but later publication date, and it might be difficult for third parties to make timely prior art submissions. Do the benefits of a prompt first Office action outweigh potential concerns of the Office action being issued too quickly?
  6. Should changes in substantive patent law (such as evolving § 101 jurisprudence) make the USPTO cautious about reducing first Office Action pendency?
  7. Should the USPTO wait longer to adjust pendency targets to see how the new patent fee structure has impacted applicant practices and business decisions?
  8. Are there global IP issues that should inform pendency targets?
  9. Are there other pendency targets the USPTO should focus on? What RCE metrics should the USPTO consider? Should the USPTO consider metrics specific for continuation, continuation-in-part, and divisional applications?

The pendency targets are important, because they influence USPTO decisions regarding staffing levels, resource requirements, patent fee levels, and revenue (and budget) estimates.

Does One Size Fit All?

One of the more interesting questions is whether pendency targets should vary depending on the Technology Center. Many people believe that applicants in high-tech fields want their patents granted quickly while applicants in pharmaceutical and biotechnology fields prefer longer examination times, but I’m not convinced that’s true enough to justify setting different pendency targets.

The concerns about “hidden prior art” are valid, but less significant for patent applications with priority claims. To answer question 5, it would be helpful to know the percentage of applications for which the U.S. filing date is not the critical date for prior art. (This would include applications based on U.S. provisional applications, foreign priority applications, and PCT applications.)

The only question I feel strongly about is question 6, to which my answer is a resounding NO. Patent law is always evolving, so uncertainty is not a good reason to delay examination.

Submit Your Comments on Patent Application Pendency

As noted above, the USPTO has requested comments by September 8, 2014. Comments must be sent by email to:

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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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