Office of Patent Petitions backlog worsens

The policy goals of the Patent Prosecution Highway are served only if PPH requests are granted promptly.  Unfortunately the USPTO is failing to grant PPH requests promptly, and things are getting worse instead of better.  Here’s the latest.

The USPTO’s internal standard is that a PPH request is supposed to get examined (and granted, if proper) within two months of the filing of the PPH request.  In the old days I could see how it might take some time for the USPTO to carry out this examination of a PPH request, because there were many details that needed to be checked.  But as of a year ago or so, the PPH request has been almost wholly self-certified by the filer.  This reduces how much work the USPTO has to do when it receives a PPH request.

In the old days the PPH requests got routed to the Technology Centers.  Each Tech Center had people whose job it was to examine and grant PPH requests.  The Tech Centers pretty consistently managed to get most PPH requests granted within the two-month internal standard.

But a year and a half ago or so, USPTO made a change.  PPH requests would go instead to the Office of Patent Petitions.  I don’t know what led to this change, but from the point of view of promoting science and the useful arts this change has been a disaster.

The backlog of undecided PPH requests at the Office of Patent Petitions has gotten consistently worse, month by month, over the past year.  By this I mean the Office of Patent Petitions is falling further and further behind.

As of last month, OPP’s dashboard said the backlog was 136 days.  That was not true — the real backlog back then was at least 144 days.

As of today, OPP’s dashboard says the backlog is 148 days.  That’s also not true — the real backlog as of today is no less than 175 days.

This failure of the USPTO to consider PPH requests promptly betrays the simple and clear policy goals of the Patent Prosecution Highway.  The idea of PPH is that if the USPTO is able to get previous search and exam results into the hands of the US Examiner, this will offer an opportunity to improve patent quality as well as timeliness of examination.  But what happens all too often is that by the time a person in the Office of Patent Petitions gets around to looking at a PPH request, the Examiner has already mailed an Office Action.  The Office of Patent Petitions then dismisses the PPH request as moot.

From the point of view of the patent examination process, such dismissed PPH requests are a disappointment.  The potential quality improvement, the potential improved timeliness of examination, both are lost in such cases.

To an applicant whose PPH request got dismissed as moot, the USPTO might say “well, you filed the PPH petition because you wanted an Office Action.  You received an Office Action.  No harm no foul.”  But there is harm when this happens.

One category of harm flows from the fact that the applicant might need to appeal.  In a PPH case the appeal gets decided on a “special” basis.  In a case where the PPH petition was dismissed as moot, the appeal gets decided in the usual 2-3 year time frame.

Another category of harm flows from the fact that the applicant might need to file an RCE.  In a PPH case the RCE gets examined fast, because the case is “special”.  Otherwise the RCE may get aged for months or a year or more.

On April 24, 2015 I faxed a letter to Director Lee about this PPH backlog.  In that letter I reported cases where PPH requests stood unexamined after anywhere from three to five months.  Eight months have passed and I have not heard back from the Director in response to that letter.

Leave a Reply

Your email address will not be published. Required fields are marked *