A View from Both Worlds: USPTO and the Federal Labs

1. A View from Both Worlds: USPTO and the Federal Labs Mojdeh Bahar, J.D.,M.A. Technology Licensing Specialist Office of Technology Transfer National Institutes of Health U.S. Department of Health & Human Services FLC MAR Annual Meeting October 2007

2. Road Map • USPTO and its mandate • Federal Labs and their mandates • Federal Labs as USPTO customers • What do USPTO’s customers/applicants want? • Internal Workings of the USPTO • Conclusions

3. USPTO’s Authority • Right to exclude others from practicing the patentee’s invention. • Quid pro quo • Article I section 8 of the Constitution “Congress shall have power... to promotethe progress of science & the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. • Governed by Article 35 United States Code

4. USPTO’s Function and Mandate • To issue patents of high quality in a timely and efficient manner. • To insure that the invention sought to be patented is useful, novel and non-obvious as set forth in 35 U.S.C. 101, 102 and 103. • To ascertain that the scope of the issued patent is clearly defined and is commensurate with the extent of disclosure to the public as set forth in 35 USC 112.

5. USPTO’s Function and Mandate …cont’d • To promote the progress of science. • USPTO hopes to achieve major goals by the new rules: • Reduce pendency • Increase efficiency • Improve the quality of patents issued

6. Federal Labs and Their Mandates • Federal labs conduct “mission oriented” research. • Although the programmatic goals of the labs may vary, the statutory requirements with which all labs must comply remain essentially uniform. • Reporting inventions and using intellectual property rights, e.g., patents, as an incentive for commercializing the technologies born in labs are essential. • Every lab is subject to reporting requirements, to their own agencies and the DoC.

7. Legal Authority

8. Patent Trends • A 2003 study shows that from 1976 to 2002, the number of patents issued each year to all federal agencies and laboratories remains essentially unchanged. • The total number of patents in all sectors grew about 140 percent over this period. • For U.S. Universities issued patents increased 1,164 percent over this period.

9. Federal Labs as USPTO Customers • U.S. private sector patents consistently averaged 95 percent of the total issued patents to all U.S. based institutions. • The number of patents issued each year to the Federal agencies and laboratories remained essentially unchanged. • The number of Federal Labs’ inventions disclosed grew from 2,662 in 1987 to 3,909 in 2001.

11. Some Caveats • Per the study, it is not clear whether university filings have increased. Is the increase in the number of issued patents a result of an increase in filings? • Per the study, it is not clear whether the industry filings were on the rise or not.

12. Federal Labs as Applicants • Federal labs have different ways of dealing with the USPTO, i.e., different levels of involvement in patent prosecution: • In-house patent application preparation • Contract law firms • Hybrid • The types of technology coming out of the Federal Labs are very diverse, e.g., mechanical, electrical, chemical, biotechnological. • The core missions of the Federal labs are different .

13. TC Application Inventory* 1 “New Application inventory” is the number of new applications designated or assigned to a technology center awaiting a first action. *Total inventory includes applications not assigned to a particular TC, awaiting processing either pre- or post-examination. TC = Technology Center *This and the next two slides are from Bob Spar’s presentation at PLCW, April 2006

14. Patent Pendency(as of 1/1/2006) 1“Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005. 2“Average total pendency” is the average age from filing to issue or abandonment of a newly filed application, completed during October-December 2005.

15. 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 October-December 2005.

16. Internal Workings of the USPTO • Too little time, too few examiners, too many applications! • An Examiner has between 8-15 hours to do one count, i.e., issue one first office action on the merits (note that this includes the searching of the claims). • Examiners do not get counts for issuing restriction requirements or second action on the merits (non-final or final) actions. • Allowances and abandonments serve as counts.

17. Internal Workings…cont’d • In some arts searches can be very involved and time consuming, e.g., chemical structures, biotech sequences. • Compact prosecution is emphasized, but does not always happen. • Any action on the applicants’ part that would save time for the examiner is always welcome, e.g., telephonic elections, proposed amendments, agenda for examiner interviews. • There is an emphasis on customer service and cooperative (rather than adversarial) relationships with the applicants/applicants’ representatives.

18. Communication and Cooperation • Communication • Interviews with Examiner- can be a win-win situation • Focus on Invention with your client and the USPTO • Cooperation • Open, frank discussions • Use of USPTO Internal Resources: Practice Specialist/QAS • Prosecution • Agree on the invention • Identify the issues • Work out the claims

19. Questions

20. OTT/NIH Contacts NIH http://www.nih.gov OTT http://www.ott.nih.gov Science. Ideas. Breakthroughs.