Director Vidal discusses pendency and other USPTO initiatives at a recent meeting. (Photo by Jay Premack/USPTO)
Working together to tackle patent and trademark pendency
An efficient and reliable intellectual property (IP) system is critical to innovating, brand building, creating jobs, and solving problems, both here in the United States and around the world. That is why, in addition to our critical policy work—including issuing guidance, engaging in rulemaking, participating in international measures and treaties, providing technical assistance to Congress, and working in the courts—we at the United States Patent and Trademark Office (USPTO) have been laser-focused on our operations, including, importantly, pendency.
When I was confirmed as Director over two years ago, I began listening to external and internal stakeholders on proposed improvements. I heard from nearly 2,000 of my USPTO colleagues on what we could do better for them and for you. In addition to implementing measures to increase patent and trademark quality and uncover and mitigate fraud, we built the objectives of improving patent application pendency (OBJECTIVE 2.3) and improving trademark application pendency (OBJECTIVE 2.4) into the second goal of our Strategic Plan.
While this blog is longer than usual, I want to provide you with a comprehensive overview of our progress toward those objectives and of our general approach to tackling pendency in both our Patents and Trademarks organizations.
The challenge
I recently spoke at a judicial conference during which one of the other speakers used a term that resonated with me: “inherited backlog.” The USPTO has long been focused on the quality of the patents we grant and the trademarks we register, and rightly so. We know how important robust and reliable IP protection is to our stakeholders and the country. However, unpredictable macro effects, including a pandemic that had an outsized impact on our application inventories, have created an “inherited backlog” of both patent and trademark applications. While our approach to reducing pendency differs in Patents and Trademarks, our efforts to inject new thinking and strategic vision are the same.
Regarding patents, in 2019 the USPTO made a number of decisions to improve patent quality, including increasing the time allotted to examine each patent application and increasing examiner hiring goals to accommodate that additional time. In 2020 and 2021, the USPTO and other IP offices around the world predicted a slowdown in filings and adjusted hiring targets accordingly. However, the slowdown in filings was more modest and short-lived than expected. That limited effect, combined with the increased time allotted per application, as well as the competitive labor market for those with the technical degrees and backgrounds needed for patent examination, resulted in an increased backlog.
Regarding trademarks, during the pandemic more people started their own companies, launched new products, increased cross-border e-commerce, and filed trademark applications to improve their brand protection. That led to unprecedented application levels in fiscal years (FY) 2020 and 2021, some of which were filed fraudulently.
The work
Over the past two years, the USPTO leadership has worked with our employee unions—the National Treasury Employees Union 243 and 245 and the Patent Office Professional Association—to implement immediate measures to address pendency times for patent and trademark applications. Concurrently, we have worked on longer-term, root-cause analyses to inform future actions to bring down pendency times without producing unintended impacts on quality or our nationwide workforce. These measures are both pro-employee and pro-stakeholder.
We are also working with our more than 10,000 employees in Patents and nearly 1,200 employees in Trademarks on additional measures to provide an even more efficient, thorough, and well-reasoned review of each application, while enabling the USPTO to deliver IP rights more swiftly over time.
Patents
When I first heard from patent examiners in the summer of 2022, there were three suggestions that consistently rose to the top: optimizing the routing of patent applications, extending working hours, and increasing pay. Each of those suggestions had the promise of not only creating a better employee experience, but also reducing pendency. If examiners could be routed applications that matched their technical backgrounds and be able to more expediently reroute applications that did not, they could spend more quality time efficiently examining the applications in their dockets. If we extended working hours, examiners could work when they were most efficient and could put in longer hours on a given day at their discretion. As for pay, an increase held the promise of not only improving the employee experience and reducing attrition, but also making examiner jobs more competitive in a challenging labor market. Overall, we concluded that to attack the macro trends impacting pendency, we needed to have more patent examiners working on applications every day. That meant we needed to dramatically increase our hiring and decrease our attrition.
So we acted. In 2022, the USPTO began implementing processes for routing patent applications to increase the likelihood that a patent application would be assigned to an examiner with the right technical background in the first instance. We also extended working hours so examiners would have more flexibility and could increase productivity.
As for pay, we recently announced that, for the first time in nearly 15 years, we secured an increase in the special rate table that covers nearly 9,000 patent professionals at the USPTO. Moreover, we made adjustments in our award structures to better attract and reward employees who make meaningful contributions to our pendency and quality goals.
We have also directly focused on hiring. In FY 2023, 644 patent examiners joined the USPTO. This fiscal year, the agency is on target to exceed our goal of hiring 850 patent examiners. Classes of new examiners are starting monthly through September. We are also working on incentive programs to leverage an all-of-agency approach in support of our examiner hiring and retention efforts. Our push to hire new examiners will continue through at least FY 2025. If you or someone you know is interested in joining or rejoining our great team, please visit our recruitment website and apply.
To set our new examiners up for success, the USPTO delivered approximately 423,400 hours of onboarding education in FY 2023. We are also adjusting that education and reimagining the way our Patent Training Academy works, with the goal of keeping examiners more engaged, more connected to our mission, and ultimately more likely to stay in their jobs for years to come.
The USPTO is also bringing more tools to examiners, including the use of artificial intelligence (AI) to streamline their processes. More Like This Document, released in October 2021, lets examiners find documents during patent examinations that are similar to those they previously found useful. Similarity Search, released in September 2022, provides examiners a list of domestic and foreign patent documents similar to the patent application being searched, which can significantly speed up the examination process.
The USPTO also recognizes that optimizing workflow plays a key role in reducing our inventory of unexamined patent applications. Not only are we overhauling our approach to timing and routing, we are also making great strides in improving the classification process and exploring the use of AI to get the correct application to the examiner with the relevant expertise.
And, for the first time ever, the USPTO established a research and development unit within Patents to test various new processes before launching them across the entire examining corps. Moving forward, we will have real data to understand how process changes impact quality as well as examining time and pendency. We will also have key data to facilitate discussions between management and the unions so we can be more agile and effective.
While the USPTO works to bring pendency down, we have received great feedback from entrepreneurs and others who have applied for speedier consideration of patent applications, sometimes obtaining a patent grant within a year. To help accelerate the application process, we offer free pre-application assessments and free expedited consideration for first-time filers. We also offer expedited processing, at no additional fee, in priority areas such as semiconductors, green technologies, and cancer treatment and prevention, and we offer expedited examination outside those areas for a fee.
As of March 2024, Patent Term Adjustment (PTA) compliance for pending applications was 80%, matching the goal. For the remaining inventory, it was 81%, also matching the goal. Complying with PTA, which extends the life of a U.S. patent to compensate for delays caused by the USPTO during the prosecution of a patent application, not only decreases pendency, but also avoids extending the 20-year terms of issued patents, so the covered invention enters the public domain when intended.
The average time between filing a patent application and the first office action was 20.2 months in April 2024, reflecting a gradual decrease over many months (as shown on our patent pendency dashboard).
Trademarks
In response to our trademark application inventory boom in FY 2021 and 2022, we increased our hiring goal and took steps to reduce inventory. Then, in FY 2023, we conducted a top-down, bottom-up, inside-out analysis of how much additional measures could reduce trademark pendency while maintaining quality and improving the employee experience. The development of these measures was a collaborative effort with our employee unions and today, six months into this comprehensive pendency reduction plan, we are seeing promising results.
One of the biggest factors in reducing total trademark pendency is reducing first action pendency. The faster we can examine a new application, the more quickly we can get it to resolution. In FY 2023, average annual trademark first action pendency was 8.5 months. This was expected but not where we wanted to be. Near the end of calendar year 2023, we made three key changes:
Added information technology (IT) development resources to more efficiently address needed fixes and make improvements in our internal examination system
Shifted the exceptional office action standard (a measure indicating the comprehensive quality of an office action) from first action to final action, thereby focusing on more concise first actions with a continued emphasis on compliance in proper decision-making
Introduced new individual and group incentives for first action productivity for examining attorneys
The USPTO made these changes on top of hiring additional trademark examining attorneys and staff, finding opportunities to increase efficiency, and launching a new training academy. In FY 2023, the agency hired 85 trademark examining attorneys who received nine months of introductory training (cumulatively approximately 28,900 hours). Two classes graduated in FY 2023, the academy’s first full year. Two more classes are going through training now, including a group of experienced trademark examiners who recently returned to the agency. This fiscal year, the USPTO anticipates hiring approximately 56 trademark examining attorneys. If you are interested in becoming a trademark examining attorney or returning to the agency as one, or if you know someone who might be interested, look for job vacancy announcements in the coming months.
Also, in June 2023 we began shifting fraud-related work to our Register Protection Office so examiners could focus on reviewing applications.
As a result of these measures and the great work of our Trademarks organization, average annual first action pendency has decreased to 7.85 months and is dropping, despite a healthy level of new filings (through April 2024, our new trademark application filings were approximately 3% higher than the first seven months of 2023). In addition, our unexamined inventory has been reduced by more than 70,000 classes so far this fiscal year, a 13.5% decrease.
IT
In addition to the IT-specific advances mentioned above, the USPTO is working across our business units—specifically Patents, Trademarks, and the Office of the Chief Information Officer—to improve the reliability and resiliency of our IT systems through upgrades, retirements, and migration to the cloud.
We recently completed the retirement of the decades-old Trademark Reporting and Monitoring (TRAM) system on May 31. Retiring older IT infrastructure such as TRAM sets the stage for providing new, more stable and secure trademark systems in the future. With TRAM behind us, our teams can now focus on tools such as TM Exam and modernize other systems to further support pendency efforts.
This follows the successful retirement in 2023 of our patent-related systems EFS-Web and Private PAIR, with roughly 98% of patent filings now using the modernized Patent Center. Patent Center provides a one-stop shop for our patents customers for filing and managing their applications. In addition, in January 2024, we took the next step in the transition to DOCX filing. Using DOCX filing instead of the outdated PDF method will: provide a more streamlined process for applicants; enable the USPTO to harmonize examination processes across international borders; and strengthen our ability to examine applications quickly and effectively, including by providing patent customers with pre-prosecution checks so they can correct errors or missing information in their application before an examiner takes a first look.
Across the USPTO, we are also migrating our systems to the cloud. More than 10 critical systems throughout our agency now run in the cloud, which ensures they run more smoothly and securely. Moving systems to the cloud also enables us to retire other legacy systems or modernize them as we adapt to new demands. With the cloud, IT systems scale more easily and recover more quickly.
Our teams are also using new engineering practices, and new tools and services, to increase the resiliency of our products and services. In addition, we are reviewing our internal IT workstreams to improve efficiency and ensure those products and services are safe and reliable.
Your role in pendency
Like other USPTO initiatives, reducing pendency requires stakeholder participation. You can avoid unnecessary delays by using the USPTO’s suite of tools and platforms. For example, following the guidance at USPTO.gov will, on average, result in patent applications being processed more quickly. There are also answers to hundreds of frequently asked questions for those filing patent and trademark applications. You can browse these questions and answers by topic and search them by keyword. You can also speak with a patent or trademark expert.
To avoid unnecessary delays, trademark applicants can follow our trademark filing tips; fill out all data fields in electronic filings; and communicate with their assigned examiner by phone and email for routine issues, many of which can be resolved quickly through informal communication. Trademark filers can also use the Trademark ID Manual to identify the ways in which they plan to use their trademark by linking to specific, pre-approved descriptions of goods and services. By using these descriptions, the USPTO’s review can move more quickly. And on July 1 the USPTO launched a public beta version of Trademark Center, a unified platform where users can search, file, and eventually track all aspects of their trademark filings.
Patent applicants can also obtain real-time feedback on their submission by uploading their DOCX documents in Patent Center. The feedback document applicants receive can help prevent unnecessary delays in processing and examination by highlighting certain issues in the application prior to filing (see common warnings and errors). To preview the feedback document prior to filing an application, customers can use the Patent Center training mode.
Summary
Overall, through data, surveys, employee feedback and business innovation, we are seeing concrete results from our actions. This is the result of great work by the USPTO’s approximately 13,400 employees, including the invaluable contributions of our support staff, and by engaged and supportive stakeholders like you. If you have ideas for ways to help us further reduce pendency, please share them with us.
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