Antony-22, CC BY-SA 4.0 https://creativecommons.org/licenses/by-sa/4.0, via Wikimedia Commons

By Michael Messinger, Partner

Here are three takeaways from remarks made by Drew Hirshfeld acting head of the USPTO at the Spring ABA-IPL meeting on April 12, 2021.*  Short answer is after a year of pandemic related uncertainty and fallout, the USPTO has managed relatively well. 

Here is a snapshot of three hot topics: reorganization, activity, and quality.

  1. USPTO Reorganization.   USPTO organization chart and senior management responsibilities were altered substantially in October 2020.  Now each of the five Deputy Commissioners (DCs) has responsibility for a portion of the Examining Corps and other management functions.  A new layer of Assistant Commissioners (ACs) is added.   In this way, there is more overlap and sharing of perspectives among DCs and ACs.  The reorg was budget neutral.  Mr. Hirshfeld said his initial thoughts were this reorganization is helpful and better suits a larger organization with over 10,000 employees. 
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  • USPTO Statistics

Mixed Filing levels in the past year.  Trademark filings are up over 50% in the last year.   Utility patent application filings are down 5.2%.  Design patent application filings are up 1.4%. 

USPTO Assessment of Itself.  Rather than focusing on average pendency statistics, USPTO is also assessing itself based on a percent compliance basis.  Now the USPTO is currently 85%-86% compliant (mailed/inventory) with PTA time frames out of a goal of 90% compliant.  See PTA Timeframes at 35 U.S.C. § 154(b).  

Allowance rate.   USPTO allowance rate for utility patents is 60%. 

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  • Patent Quality

Quality of Patent Examination in Last 3 Months

Patent practitioners continue to report favorably on their perception of patent examination quality as being good or excellent (57%) in the last 3 months compared to poor or very poor (6%).  Examiners continue to report a relatively high need for Applicants to recite claims drawn to the inventive concept and not be overbroad.

Obviousness not Subject Matter Eligibility is Key Driver of Quality Examination.   Mr. Hirshfeld reported only 6.5% of utility patent applications received a subject matter eligibility rejection.   Obviousness in his view is the key driver of a patent quality in examination.  Mr. Hirshfeld also reported the USPTO is looking into the recent suggestion from Senator Tillis and others for a pilot program where claims are evaluated under 35 USC 101 only after other rejections have been cleared.

Other items noted were the recent request for comments on expanding involvement of underrepresented groups in the IP ecosphere (NCEAI, 86 Fed. Reg. 8610, Feb. 8, 2021) and the change from PDF to structured text format (DOCX) effective Jan. 1, 2022.

*Drew Hirshfeld currently is performing the functions and duties of the Under Secretary for Intellectual Property and Director of the USPTO.  The graphs above were taken from D. Hirshfeld, “ABA IPL Spring Virtual: Hot Topics from the USPTO,” presentation on April 12, 2021.