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When Considering PTO Reform, Look to KIPO For Clues

By Peter Zura

Earlier in the month, The US Patent Policy Advisory Committee issued its 2008 report that explored ways to tackle various quality and pendency issues affecting the PTO. The report concluded that application backlog "reached truly unacceptable levels in 2008."

Not long after, various former PTO officials testified before Congress on the same issues, and referred to the backlog problem as "horrendous."

More recently, The US Chamber of Commerce officially released Recommendations for Consideration by the Incoming Administration Regarding the US Patent and Trademark Office. This report cited the 750,000-application backlog as a significant contributor to "an agency in crisis."

While it is convenient to think of this as a "USPTO problem", the EPO and the JPO have experienced similar backlogs, and other national patent offices (e.g., SIPO) have comparable problems. However, as Joff Wild from the IAM blog puts it, "there is one country that has managed to do something" about application backlogs - the Korean Patent Office (KIPO).

From the most recent annual report (link):

To swiftly and accurately grant rights for the ever-growing number of IP applications, we undertook various measures to drastically improve the efficiency of our examination process. For instance, we adopted the Six Sigma method of management; we expanded our outsourcing of certain examination tasks; and we promoted online and at-home examinations. As a result, by the end of 2007, we succeeded in shortening the first action pendency period for patent examinations to a mere 9.8 months, which means we now have the fastest patent examination service in the world. Moreover, the examination periods were shortened to 5.7 months for trademarks and 5.5 months for designs.

This is quite remarkable, considering that pendencies as recent as 2002 were averaging 22.6 months (and as long as 21 months in 2004).

In addition, KIPO made recent changes in their patent laws to allow "customer-tailored" examination schedules that come in 3 varieties: accelerated, normal, and delayed examination.

Under the "accelerated" examination track, applicants receive office actions within 2-3 months of filing their petition; certain applications should include a prior art search from one of the four authorized organizations (designated by KIPO). Under a "delayed" examination track, applicants can choose the time for KIPO examination ranging from 18 months to 5 years after the filing date. For the "normal" examination track, KIPO claims to keep the average pendency of the first office action to less than 16 months (see here and here).

Of course, nothing here is new to the USPTO. And with the exception of delayed examination, these programs have already been in use by the Office. So the question is, how did KIPO manage to do it, and how can the USPTO replicate their success?

Full post as published by Two-Seventy-One Patent Blog on December 23, 2008 (boomark / email).