Testimony at “USPTO Oversight Hearing” on February 27, 2008.
On February 27, 2008, USPTO Director Jon Dudas spoke before the U.S. House of Representatives Committee on the Judiciary in a “USPTO Oversight Hearing”. His prepared testimony may be found here. Others who also gave testimony include Robin Nazzaro from the U.S. General Accounting Office (GAO), Robert Budens, the President of the Patent Office Professional Association (POPA), and Alan Kasper, the First Vice President of the American Intellectual Property Law Association (AIPLA).
A USPTO press release relating to the hearing may also be found here.
A notable quote from the testimony of Mr. Dudas follows:
Mr. Chairman, as we look to the future, we will make every effort to improve on our successful record in fiscal year 2007. Our patent examiners completed over 362,000 patent applications in 2007, the largest number over, while maintaining for the second year in a row an examination compliance rate of 96.5 percent, the highest in a quarter of a century. The allowance rate for patents is currently 44%. This is in contrast to allowance rates in excess of 70% just eight years ago.
Also, over the past few years, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.
Allowance rate of 44%? BPAI affirming rejections 69% of the time? A seemingly difficult time to be a patent applicant.
One has to wonder whether a dropping allowance rate is reason to celebrate. We are admittedly biased, but does a dropping allowance rate really mean the patent system is improving? Or does this just mean that more inventors are being denied their right to patents for their inventions?
35 U.S.C Section 102: A person shall be entitled to a patent unless–
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in – (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
U.S. Constitution – Article 1, Section 8, Clause 8 :
The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; . . . .
JW Note – Reference to 35 U.S.C. Section 102 added 2/28/08 – Excellent comment Craig!