TC 1600 Biotechnology and Pharmaceutical

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• TC 1600 Biotechnology and Pharmaceutical
• Customer Partnership Meeting
• John Doll - Commissioner for Patents

November 10, 2005
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Contact Information

• John Doll
• Commissioner for Patents
• e-mail john.doll_at_uspto.gov
• Phone [phone]

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Application Filings and Examiner Production
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UPR Applications Filed

• FY 05 plan 375,080 (7 above FY 04)
• 383,000 as of 10/30/05 (preliminary)
• Current projection1.7 over plan

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Production
1 UPR Utility, Plant, and Reissue
Applications. 2 FAOM First Action on the
Merits first action count by an examiner after
the filing of an application (does not include
restrictions or other miscellaneous actions). 3
Disposal An examiner allowance, abandonment,
or disposals following a board decision. 4
Production Unit First action count plus
disposal count divided by 2. 5 PCT Patent
Cooperation Treaty. PCT applications are
processed differently and tracked separately from
US National stage applications. For FY 05,
15,147 PUs is 35,389 processed applications.
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PENDENCY
. . . vs the Backlog
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FY 05 Patent Pendency
(as of 10/1/2005)
1 Average 1st action pendency is the average
age from filing to first action for a newly filed
application, completed during July-September FY
2005. 2 Average total pendency is the average
age from filing to issue or abandonment of a
newly filed application, completed during
July-September FY 2005. Assuming current input
and output estimates, the agency should achieve
first action pendency of 21.3 months by the end
of FY 2005 and total pendency of 30.2 months.
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First Action Pendency by Art Areas
1 Average 1st action pendency is the average
age from filing to first action for a newly filed
application, completed during July-September FY
2005.
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Inventory by Art Examples
The number of months it would take to reach a
first action on the merits (e.g., an action
addressing patentability issues) on a new
application filed as of Jan 2005 at todays
production rate. Todays production rate means
that there are no changes in production due to
hiring, attrition, changes to examination
processing or examination efficiencies, and that
applications are taken up in the order of filing
in the given art unit/area. Of course, USPTO is
taking aggressive steps to ensure changes that
will significantly lower the inventory rates in
high-inventory art areas.
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TC Application Inventory
1 New Application inventory is the number of
new applications designated or assigned to a
technology center awaiting a first action. 2
Overall Pending Application inventory is the
total number of applications designated or
assigned to a technology center in an active
status. Includes new applications rejected
awaiting response amended under appeal or
interference suspended reexams and allowed
applications awaiting grant publication. Total
inventory includes applications not assigned to a
particular TC, awaiting processing either pre- or
post-examination.
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Pendency Achieved
Target 30.2 Months
Target 21.3 Months
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Patent Quality (Shared Responsibility)
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Quality of Products FY 05
Compliance and error rates as measured by OPQA.
1Compliance is the percent of office actions
reviewed and found to be free of any in-process
examination deficiency (an error that has
significant adverse impact on patent
prosecution). 2Patent allowance error rate is the
percent of allowed applications reviewed having
at least one claim which is considered
unpatentable on a basis for which a court would
hold a patent invalid. Allowance occurs before
a patent is issued, so these errors are caught
before any patent is actually granted.
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Percent of Allowed Applications with Material
Defect
Target 4
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Re-Work
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Technology Centers Rework Statistics
Rework first actions are those actions that
are in a Continuing (CONs and CIPs), RCE, CPA or
129(a) applications (excludes Divisionals).
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Hiring and Retention
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Hires and Attritions
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FY 05 Attrition of Average Staff
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Pendency Projections
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Production
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Stats and Stuff
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Continuation Applications Filed
Straight Continuations 37 CFR 1.53 (b)(1) No
Divisionals or CIPs as of 10/23/05
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RCE/CPA Filing Rates
as of 10/23/05
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Total Continuation Filing Rates
Straight Continuations 37 CFR 1.53 (b)(1) No
Divisionals or CIPs as of 10/23/05
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Total Continuation Filing Rates
Continuation Straight Continuations 37 CFR
1.53 (b)(1) RCE CPA Not Divisionals or
CIPs as of 10/23/05
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Continuation Filing Rates
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Continuation Filing Rates
As of 10/24/2005
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Distribution of Independent Claims at Filing
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TC 1600 Distribution of Independent Claims at
Filing
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Distribution of Total Claims at Filing
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TC 1600 Distribution of Total Claims at Filing
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Total Claims at Filing and Issue
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Distribution of the Number of References Cited in
Applications
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Markush Practice
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• A cell adhesion protein of formula (1),
• A-(B)-(C)-(D)n-E
• or a pharmaceutically acceptable derivative
  thereof , wherein . . .

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Accelerated Examination Would You Like Your
Patent In 12 Months ?!?
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Accelerated Examination

• Features of the proposed revision
• Move to the head of the line
• Final Disposition within 12 months
• Program for expedited Issuance of Patents
• e-file application and all follow on papers
• Single Invention
• Limited Number of Claims
• Patentability Report
• Possible Interview before 1st Action
• Shortened Statutory Period
• Enforcement of special status in the Corps

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Contact Information

• John Doll
• Commissioner for Patents
• e-mail john.doll_at_uspto.gov
• Phone [phone]