Joff Wild

When one of the reported front-runners for the USPTO Director's job gives an in-depth analysis of the challenges facing the office and examines some of the options for tackling them, it is worth paying some attention. Courtesy of the Patent Docs blog comes a report of comments made by AIPLA executive director Todd Dickinson during a roundtable discussion at the Bio Conference: 

Mr. Dickinson ... who served as USPTO Director during the Clinton Administration, discussed a number of challenges that will confront the next Director, including the application backlog, application pendency, the current revenue shortfall, examiner attrition, and examination quality. With respect to the first two challenges, Mr. Dickinson noted that the application backlog was approaching a million applications and that application pendency currently stood at 38 months. He indicated that Gary Locke, the new Secretary of Commerce, had recently proposed reducing pendency to only 10 months. While he found this goal to be laudable, he observed that the last time the USPTO had a 10-month application pendency, the country was embroiled in a Civil War. He also noted that only one USPTO Director had been able to reduce application pendency in the past thirty years (later confirming that he had been that lone Director). With regard to the Office's revenue shortfall, Mr. Dickinson pointed out that as a result of a drop in application filings and lower maintenance fee collections, revenue was down 10% for the year. The revenue shortfall, in turn, had forced the Office to implement a hiring freeze and eliminate programs such as law school reimbursement for examiners, which not surprisingly, had negatively impacted examiner attrition (although Mr. Dickinson noted that the negative impacts have been somewhat offset by the unsettled job market). Finally, Mr. Dickinson argued that examination quality was an issue that the USPTO needed to address, and one that patent reform (which has focused on downstream, litigation-related "reforms") could not fix.

Mr. Dickinson next proposed several USPTO reforms, including changes in Office leadership, the count system, examination time allotments and examiner pay, enhanced worksharing, an end to fee diversion, and deferred examination. Mr. Dickinson advised the new USPTO leadership that rulemaking transparency and attempts to engage stakeholders in the process would be critical to the success of any future rulemaking (a lesson he said he learned during passage of the AIPA, and a lesson that the last Administration never seemed to learn). According to Mr. Dickinson, the count system, by which the Office measures examiner (and supervisor) performance, was in need of an update (he noted that the system had not been significantly changed in 30 years). However, he advised session attendees that such an update would not come cheap, as the last update of the system cost $20 million. Mr. Dickinson also argued that the amount of time allotted for examination, which he said ranged from 18-36 hours per application, was also in need of an update. Mr. Dickinson warned, however, that adding just one hour to the examination of each application would result in an additional $20 million in expense. On the topic of worksharing, Mr. Dickinson stated that continued implementation of such programs would require a leap a faith and buy-in from stakeholders with regard to searches conducted by foreign patent offices. While noting that the last six Bush budgets and the first Obama budget had specified an annual end to fee diversion, Mr. Dickinson argued that a permanent end to fee diversion was needed in order to permit the USPTO to engage in long-term planning. Finally, on the topic of deferred examination, he admitted that his own organization had traditionally rejected deferred examination proposals, but refused to dismiss deferred examination as a possible tool for reforming the USPTO, stating that the devil would be in the details (e.g., how many years would be available, how would the fee structure be altered, how would intervening rights and patent term adjustment be handled). 

It is now three weeks and counting since Gary Locke, the US Commerce Secretary, stated that he had made the choice as to who would be the next Director and that the only thing that stood in the way of revealing his identity was the vetting procedure. Well, it must be one heck of a vetting procedure is all I can say. I can't help wondering, though, whether Dickinson would have felt able to be so open in his analysis if he believed he was still in the running for the job.