Each year, the United States Patent and Trademark Office (“USPTO”) publishes a comprehensive document detailing statistics, achievements, and future goals for the USPTO. On November 18, 2019, the USPTO published the most recent version, covering fiscal year 2019 (“FY 2019”).
One of the main features highlighted in the 2019 USPTO report is an emphasis on reducing patent application pendency via a patent prosecution acceleration initiative.1 As described throughout the 2019 USPTO report, expedited patent examination and pendency reduction is central to the competitiveness of a variety of technology areas and has been prioritized by the commerce department.2 In order to achieve the goal of accelerated examination, the USPTO has increasingly relied on data analytics to help identify the most efficient way of prioritizing application review while attempting to allocate new applications to examiners in the most efficient way possible.3
First action pendency reduced in FY 2019
In FY 2019, the USPTO saw the average first action pendency drop to 14.7 months across all technology sectors. First action pendency measures the time period from when an application is filed until an initial determination of patentability by the patent examiner is rendered. The 14.7 months was the lowest average pendency for the USPTO since FY 2002.4 The 14.7 month number also represents a 7% reduction relative to just a year earlier in 2018 when the average pendency for a first action was 15.8 months. 14.7 months pendency is also significantly better than the 17.3 months to first action in FY 2015, despite there being approximately 47,000 more patent filings in FY 2019 (665,231) as compared to FY 2015 (618,062).5
Across technology sectors, first action pendency time is dependent on technology sector, with Tech Center 2600 (Communications) and Tech Center 1600 (Biotechnology and Organic Chemistry) having the shortest first action times of 10.4 months and 11.8 months, respectively. Tech center 3700 (Mechanical engineering) has the longest time to first action at 19.1 months.6
Total pendency in FY 2019
The total application pendency, which is measured as the time from filing until an application is either issued as a patent or abandoned, was 23.8 months in FY 2019. While this number was unchanged from FY 2018, the total pendency number has steadily improved over the last few years. For example, total pendency in FY 2014 was 27.4 months across technology centers.
Next Steps to further lower application pendency
The USPTO has implemented a number of programs over the last few years aimed at streamlining examination, for example, Track One prioritized examination, First Action Interview Pilot Program, Quick Path Information Disclosure Statement (QPIDS), age-based accelerated examination, the After Final Consideration Pilot 2.0 (AFCP 2.0), and Patents 4 Patients (the Cancer Immunotherapy Pilot Program).7 Many of these programs have led to increased efficiency and a more collaborative USPTO/Applicants relationship.
In addition, the USPTO has recently placed an emphasis on reducing application pendency by altering the way that new applications are assigned to examiners. The USPTO refers to this process as “new application routing.”8 While the USPTO does not describe the exact details of the updated routing process, they have indicated that the new process for routing applications will use an updated classification system to match the examiner’s individual expertise to the technologies covered in a respective application. For example, the USPTO has recently transitioned from the old United States Patent Classification (USPC) system to the new Cooperative Patent Classification (CPC) system that is used by over 45 intellectual property offices around the world.9 According to the USPTO, the new application routing process will better match the unique technological profile of each application with the work experience of a particular examiner, thereby enhancing the process of assigning applications to examiners with the requisite expertise and experience.10 The USPTO has further indicated that every year they determine the areas of high pendency, and new examiner hires are placed in these areas. Additionally, applications from areas of high pendency are routinely redistributed to examiners in low pendency areas where technology expertise overlaps.
In sum, the USPTO has made progress in reducing first action and total application pendency. The renewed emphasis on routing cases to examiners with the best technical background and capacity to promptly work on applications will likely only improve pendency moving forward. This is a welcome development to applicants who rely on an efficient and streamlined patent examination system as a component of business development and investment.
1) The USPTO describes accelerating prosecution as objective number 1. 2019 USPTO report at page 51.
2) See https://www.uspto.gov/sites/default/files/documents/USPTOFY19PAR.pdf. at, for example, at pages 3, 9, 15, and 60.
3) Id. at pages 52 – 53.
4) Total application filings were about 353,000 in FY 2002 and about 667,000 in FY 2019.
5) See https://www.uspto.gov/sites/default/files/documents/USPTOFY19PAR.pdf at page 29.
6)Id at Table 4.
7) Id at Table 53. For a discussion of the Patents for Patients program please see our blog https://www.mmviplaw.com/usptos-patents-for-patients-program-a-good-way-to-expedite-patent-grant-of-cancer-related-applications/: For an overview age-based accelerated examination please see our blog at https://www.mmviplaw.com/accelerating-u-s-patent-examination-based-on-inventor-age/
8) See https://www.uspto.gov/sites/default/files/documents/USPTOFY19PAR.pdf. at, for example, at pages 52 and 53.
9) See, for example, https://www.uspto.gov/patent/laws-and-regulations/examination-policy/updates-patent-examination-time-application-routing and https://www.uspto.gov/sites/default/files/documents/ExaminationProcessUpdatesMay2019.pptx