Thursday, August 14, 2014

USPTO Requests Public Comments on Optimum First Office Action (Examination) and Total Patent Pendency

I am often asked how long will it take to get examination of US patent application. People know that issuance of a US patent is not guaranteed, but also want a sense of how long it will take on average if all goes well. The USPTO is aware this is a common concern so published Request for Comments on Optimum First Action and Total Patent Pendency seeking the public's input on the optimal time from the filing date to get the first Office action and a US patent.

Five years ago, the USPTO targeted ten months for the first action and twenty months for issuance. The USPTO states in the last four years it reduced average first action pendency from 25.7 months to 18.1 months, and reduced average total pendency from 35.3 months to 28.1 months.

This sounds like good news for patent applicants, however, the USPTO concedes that the average pendency in both cases does not include applications in which a Request for Continued Examination (RCE) has been filed. Since RCE's constitute nearly half of all of the applications pending, it seems that it would be appropriate to see how they affect the pendency values.

Patent Public Advisory Committee (PPAC) notes it "supports reducing pendency and while the proposed levels are laudable, there is nothing magical about the proposed pendency times."

I am glad the patent pendency problem is being reviewed, but note reducing patent pendency to the target amounts (e.g., 10/20 months) is ultimately in the USPTO's hands, not ours. At the same time, the America Invents Act (AIA) has a number of options to reduce pendency:
  • Prioritized Examination: Payment allows a final disposition of an application within a year.
  • Patent Prosecution Highway: Advances an application if its claims were allowable in an earlier counterpart application.
  • First Action Interview: Grants an interview before the first Office action.
  • After Final Consideration Pilot (AFCP) - authorizes additional time for examiners to consider after final rejections.
  • Quick Patent IDS - Eliminates need for a RCE to submit an information disclosure statement for consideration by the examiner after issue fee payment.
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