[Ip-health] U.S. Sets 21st-Century Goal: Building a Better Patent Office

Riaz K Tayob riaz.tayob at gmail.com
Mon Feb 21 11:22:45 PST 2011

U.S. Sets 21st-Century Goal: Building a Better Patent Office
Mary F. Calvert for The New York Times

David Kappos of the Patent Office, with an Edison bulb.
Published: February 20, 2011

WASHINGTON — President Obama, who emphasizes American innovation, says 
modernizing the federal Patent and Trademark Office is crucial to 
“winning the future.” So at a time when a quarter of patent applications 
come from California, and many of those from Silicon Valley, the patent 
office is opening its first satellite office — in Detroit.
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That is only one of the signs that have many critics saying that the 
office has its head firmly in the 20th century, if not the 19th.

Only in the last three years has the office begun to accept a majority 
of its applications in digital form. Mr. Obama astonished a group of 
technology executives last year when he described how the office has to 
print some applications filed by computer and scan them into another, 
incompatible computer system.

“There is no company I know of that would have permitted its information 
technology to get into the state we’re in,” David J. Kappos, who 18 
months ago became director of the Patent and Trademark Office and 
undersecretary of commerce for intellectual property, said in a recent 
interview. “If it had, the C.E.O. would have been fired, the board would 
have been thrown out, and you would have had shareholder lawsuits.”

Once patent applications are in the system, they sit — for years. The 
patent office’s pipeline is so clogged it takes two years for an 
inventor to get an initial ruling, and an additional year or more before 
a patent is finally issued.

The delays and inefficiencies are more than a nuisance for inventors. 
Patentable ideas are the basis for many start-up companies and small 
businesses. Venture capitalists often require start-ups to have a patent 
before offering financing. That means that patent delays cost jobs, slow 
the economy and threaten the ability of American companies to compete 
with foreign businesses.

Much of the patent office’s decline has occurred in the last 13 years, 
as the Internet age created a surge in applications. In 1997, 2.25 
patents were pending for every one issued. By 2008, that rate had nearly 
tripled, to 6.6 patents pending for every one issued. The figure fell 
below six last year.

Though the office’s ranks of patent examiners and its budget have 
increased by about 25 percent in the last five years, that has not been 
enough to keep up with a flood of applications — which grew to more than 
2,000 a day last year, for a total of 509,000, from 950 a day in 1997.

The office, like a few other corners of the government, has long paid 
its way, thanks to application and maintenance fees. That income — $2.1 
billion last year — has made it an inviting target for Congress, which 
over the last 20 years has diverted a total of $800 million to other 
uses, rather than letting the office invest the money in its operations.

Applications have also become far more complex, said Douglas K. Norman, 
president of the Intellectual Property Owners Association, a trade group 
mainly of large technology and manufacturing companies.

“When I was a young patent lawyer, a patent application would be 20 to 
25 pages and have 10 to 15 claims,” Mr. Norman said. A claim is the part 
of the patent that defines what is protected. “Now they run hundreds of 
pages, with hundreds, and sometimes thousands, of claims.”

Lost in the scrutiny of the office’s logjam, however, was the fact that 
the number of patents issued reached a record last year — more than 
209,000, or 29 percent more than the average of 162,000 a year over the 
previous four years. Rejections also hit a high of 258,000 — not a 
measure of quality, Mr. Kappos said, but a sign of greater efficiency.

Between the backlog of 700,000 patents awaiting their first action by an 
examiner and the 500,000 patents that are in process, a total of 1.2 
million applications are pending.

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A version of this article appeared in print on February 21, 2011, on 
page A1 of the New York edition.

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