New USPTO Rule Provides for Electronic Exchange of Priority Documents

Under a final rule issued by the U.S. Patent and Trademark Office (USPTO), certified copies of foreign applications from which priority is claimed under the Paris Convention can be transferred electronically to the USPTO, thus relieving patent applicants from the burden of submitting a certified copy of each priority application. Currently, the USPTO has established a reciprocal agreement only with the European Patent Office (EPO), which provides for the electronic transfer of European patent applications and those of individual EPO member countries. The USPTO is also exploring a similar agreement with the Japan Patent Office. For the present time though, applicants must now follow the existing procedure of submitting a certified copy of any Japanese priority application.

Under the current agreement between the USPTO and the EPO, a procedure has been established to retrieve priority documents electronically from the EPO. Applicants who apply for U.S. patents must submit a request within the later of four months from the U.S. filing date or 16 months from the foreign application priority date. For example, upon filing a new U.S. patent application, the request can be submitted, which authorizes the USPTO to retrieve an electronic copy of any foreign applications from which the U.S. patent application claims the benefit of priority under 35 USC 119(a)-(d). There is no official fee for submitting the request. The USPTO will then attempt to obtain an electronic copy of the foreign priority application(s) at 17 months from the earliest priority date. If the first attempt is unsuccessful, another retrieval attempt will be made when the application is docketed to an examiner. In the unlikely event that both retrieval attempts are unsuccessful, the patent applicant will be notified and required to submit a certified copy of the priority document.

The final rule issued by the USPTO is written broadly to encompass any future agreements between the USPTO and other foreign intellectual property offices. Therefore, it is likely that if the current program with the EPO is successful, the new procedure will be expanded to other countries. The electronic exchange of priority documents is expected to reduce costs for patent applicants and reduce handling mistakes by the USPTO.

USPTO Will No Longer Publish Top 10 Patent Holders List

Beginning in 2007, the USPTO will no longer release an annual list of the top ten organizations receiving the greatest number of U.S. patents in a year. In a recent press release announcing its decision, the USPTO emphasized patent quality over quantity. According to the USPTO, patent quality achieved its highest marks in 2006, a year in which the USPTO had the lowest allowance rate of patents in more than 30 years. It should be noted though that the USPTO’s measure of quality is derived from its own internal review procedure, which focuses on post-allowance review by a team of quality-control examiners. However, the USPTO also mentioned several current programs established in an effort to improve the quality of patent examination, including new certification requirements for examiners, an improved eight-month training program, a separate unit focused on reexamination, and electronic processing of patent applications “to make the patent examination process more efficient and effective.”

USPTO Releases Statistics for Fiscal Year 2006

In a press release issued December 22, 2006, the USPTO listed various statistics applicable to patent and trademark examination during Fiscal Year 2006, which ended September 30, 2006. Jon Dudas, Under Secretary of Commerce for Intellectual Property, commented that 2006 was a “record-breaking year for the USPTO.” In particular, the USPTO focused on the following areas of improvement: quality and timely examination of applications, increased hiring and training of examiners, and user-friendly electronic filing and processing systems.

In Fiscal Year 2006, according to the USPTO, U.S. patent examiners completed 332,000 patent applications, and had an allowance rate of 54 percent, the lowest on record. However, the USPTO also received 440,000 new patent applications in 2006, which contributed to the backlog of unexamined applications. As a result, 1,218 new patent examiners were hired in 2006. Trademark applications also increased significantly in 2006, with 350,000 trademark applications being filed, over 94 percent of which were filed electronically. The USPTO has implemented a patent telecommuting program, which allows 500 patent examiners to work from home four days a week. Similarly, 220 trademark attorneys currently participate in a work-at-home program.