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How first-to-file affects the USPTO

US patent applications were “three to four times” higher than normal in the week before first-to-file came into force on March 16, Acting USPTO Director Teresa Stanek Rea said last week

Speaking at Managing IP’s US Patent Forum, Stanek Rea said the “flurry” of new applications would increase the backlog. But she added that the Office’s aim is to get the backlog permanently below 600,000 applications as soon as possible. In 2009, there were over 750,000 unexamined applications.

Stanek Rea became Acting Under Secretary of Commerce and Acting Director of the USPTO earlier this year, after David Kappos retired from the Office. She also remains Deputy Under Secretary and Deputy Director.

A permanent replacement for Kappos has not yet been appointed. He has since joined the law firm Cravath and was honoured with an outstanding achievement award at Managing IP’s North America Awards dinner last week.

Stanek Rea said the implementation of the America Invents Act was a “truly historic moment” for patents, and added that the Office is being aggressive with hiring and recruiting. “We think the AIA is something that long-term is very good for innovators,” she added, saying it will help with work sharing and bring down costs for inventors.

The USPTO hired 1,505 patent examiners last year, and another 200 so far this year, with a further 300 expected by May or June. Stanek Rea said the attrition rate among examiners is now an “extremely low” 2.8% and there are 7,800 patent examiners in total. In addition, 30 new trade mark examiners have been hired and about 70 to 75 judges have joined the USPTO in the past year.

“Bringing in new examiners sooner is essential for us,” said Stanek Rea, because of the time needed for training. She added that training has been enhanced as examiners now have to examine both pre-AIA and post-AIA applications. Training materials will be published online.

Another project for the USPTO is establishing the new offices in Detroit (which already has 65 examiners and 12 judges), Silicon Valley, Dallas and Denver. “Each satellite office is in a different area of the United States and will be developed concurrent with the users in that geographic area,” said Stanek Rea, who added that there are no plans to have trade mark staff in the new offices at the moment, though there would be video-conferencing facilities which could be used by trade mark applicants – though she added that plans are “evolving”.

The Acting Director added: “On the international front, we’re having a significant amount of discussions with international colleagues talking about things such as a harmonised grace period, to bring us into line with each other.” She said harmonisation included both procedural and substantive matters, and the aim was to increase patent quality and benefit inventors and innovation worldwide.

The US Patent Forum took place in Washington DC on March 19. For more details, visit our US Patent Forum page.

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