Why not allocate USPTO examiner resources intelligently?

USPTO’s present practice is to try to make patent examiners examine cases pretty much in sequence according to their filing date.  The oldest case gets examined first, more or less.  (There are of course exceptions for example for cases that are on the Patent Prosecution Highway.)  I suggest this is not the smartest way for USPTO to allocate its examination resources.

The fact, not acknowledged in any existing USPTO practice or procedure, is that there are some applicants that absolutely do not care how soon their patent applications get examined.  And meanwhile, USPTO beats itself up about “pendency”, by which is meant “how long does it take the USPTO to figure out, across all pending patent applications, what is patentable and what is not patentable?”

This reality (that some applicants absolutely do not care how long the USPTO takes to examine their case) might be because the applicant has only limited funds right now to pay for things like responding to office actions, filing divisional patent applications, and so on.  Such an applicant hopes that it will find more money later to pay for these things.

Or it might be because the applicant is unable to predict whether the first office action will be good news or bad news, and would prefer to postpone any bad news for as long as possible.

In any event, the present USPTO practice, when beating itself up about “pendency”, lumps together both categories of patent applications — the ones where the applicant cares how long the USPTO takes to do its job, and the ones where the applicant does not care how long the USPTO takes to do its job.

The alert reader will have no difficulty guessing where I am going with this.  I think what the USPTO should do is to provide some simple way that an applicant could let the USPTO know if a particular application is one for which the applicant does not care how long the USPTO takes.  USPTO could then let such applications fall to the back of the queue.  Meanwhile, other applications in the queue would get examined sooner.

With such a mechanism, everybody wins:

  • the applicants who wish their applications could be examined sooner would get their wish — their applications would move up in the queue.
  • the applicants who do not care how long it takes (and who in at least some cases would frankly prefer that examination be postponed) would get their wish.
  • the USPTO, when accumulating its backlog statistics, could turn its attention away from the entire body of not-yet-examined cases, and could instead focus on the cases for which applicants actually care how long the examination takes.

Importantly, although there would be some modest one-time cost to USPTO to set up this mechanism, once it was set up it would not require inputs of human time to administer.  The smart way to do this would be to provide a simple check box in Private PAIR.   The applicant (or practitioner) would log in to Private PAIR and check the “no rush” box.  This would permit USPTO’s case management system to move that case down in the queue and would permit some other patent application to move up in the queue.

With such a system, the applicant’s circumstances might change later.  The applicant might for example later find the money to pay for responding to an office action.  At this point the applicant would log in to Private PAIR again and uncheck the box.  The case would then be permitted to move along in the queue and would eventually get examined.  My suggestion is that such a case be returned to the examination queue as if it had been filed at the time of the unchecking of the box.

Depending on later events such as the staffing changes in a particular art unit, or levels of later filings in that art unit, a “no rush” case might in rare cases linger long enough that the 20-year patent term would have expired.  In such a case I guess the application would be deemed abandoned.  This would also benefit the USPTO as it would count as a disposition of a case, without an examiner having to lift a finger.

With such a “no rush” system in place, USPTO would be able to accumulate the statistic that really matters, namely the backlog that contains the cases for which the applicant cares about the size of the backlog.

A moment’s attention must be given to the members of the general public who might feel that they are disadvantaged by a case dragging on for a long time, a case that might inject some business uncertainty in their affairs.  The response to this would be (a) to establish that “no rush” status is only available in cases where no non-publication request is in place, and (b) to provide a mechanism in which, for some modest fee (I suggest $50) any member of the public could request that a “no rush” case be returned to the regular examination queue.

A variant of this system might provide that the postponement of examination due to checking the “no rush” box would only last for (a maximum of) some predetermined number of years.  Ten years, perhaps, or eight years or six years.  And again a member of the public could ask that the “no rush” status be lifted.

Comments welcome.

5 Replies to “Why not allocate USPTO examiner resources intelligently?”

  1. An interesting idea on the whole. How do you imagine patent term adjustment playing into the system? Perhaps a different implementation would allow for the no-rush applications to exist in a separate queue from the normal pendency applications and the normal application queue could be addressed at a higher rate than the no-rush queue (for example, two normal applications added to an examiner’s docket for every one no-rush application added). This rate could be adjusted as the normal/no-rush ratio increased or shrunk to allow for managing the respective queue sizes. This also ensures that no-rush applications continue to move up in the queue and don’t get continually pushed back by wave after wave of normal pendency applications until the patent application may choose to remove the no-rush status. This method would also allow for the important statistic to be measured since you would examine only the length of the normal pendency period to the exclusion of the no-rush cases (which would undoubtedly face longer times).

    1. I would think that PTE would stay as it is … even if you allow the USPTO more time to examine, it’s still the PTO’s backlog that is a result of them taking so long and not handling your case earlier. That’s not your fault … though I suspect the government won’t see it that way.

      If PTE stayed the same, then you could go for a longer term patent under this strategy.

  2. I tend to agree more with Patrick H. To me “no rush” should not be the equivalent of an expressed “deferred examination”, which is basically what the blog is proposing. I would think that even a “no rush” application should have the expectation of getting a first Office Action within 2.5-4 years.

  3. Patrick and Jeff discuss essentially a system that would exist if Track III (Deferred Examination) would be added to the existing two tracks. Track I is the prioritized examination; Track II is todays standard examination practice and Track III would be a Deferred Examination track. I have proposed and analyzed in detail a 3-year default Deferred Examination system for Track III (see my comments at http://j.mp/DE-Comments ). The most important feature of this system is that it can save about 20% of examination workload due to claim obsolescence. If Track III is made the default track, wherein entry into Track II requires a simple request for examination upon filing, we would by definition have in Track II the “no rush” solution that Jeff is talking about.

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