This article is the first of a four-part series examining the USPTO’s role in administering the patent system. Other articles in this series: Part II: Human Resources. Part III: Databases. Part IV: Experts and Expertise.

The USPTO headquarter campus located in Alexandria, VA. Image courtesy Rajiv Patel. For 215 years the United States patent system has protected the rights of inventors by issuing legal documents protecting their intellectual property. Inventors, businesses, and analysts have generally agreed that the system serves its intended purpose and helps America remain on the forefront of innovation. Recently though, dissenting arguments are becoming more widespread and calls for change are becoming louder. This article is the first of a four-part series addressing the current state of the U.S. Patent and Trademark Office (USPTO) and major obstacles it faces in continuing its goal of fairly and effectively protecting intellectual property rights.

What is patentable?

At the very minimum, the USPTO must determine which ideas are patentable and which aren’t. Title 35 of the United States Code lays out the criteria for determining patentability, and recent troubles bring to light the fact that “what sort of inventions can be patented?” is still an open question for a good deal of twenty-first century technology. The courts are still working on this problem, but this definition lies outside the purview of the USPTO’s mission. The majority of this government agency’s employees are patent examiners who are more concerned with the day-to-day task of judging applications and granting patents. These examiners evaluate the validity of patents based on the important criteria of novelty and obviousness on top of subject patentability. At this task alone, the system is far from fully functioning.

A broken system

A recent New York Times article claims that “the patent office has a reputation for being overworked, understaffed and plagued by employee turnover, and employees concede that some of their work is subjective.” A 2010 Government Accountability Office report repeated concerns over the agency’s inability to address a backlog of 700,000 patent applications pending evaluation. For context, that’s a lot -- the USPTO granted 247,713 patents in 2011, their most productive year to date. What’s more, many patents are issued without proper legal scrutiny. A 2010 study from the Columbia University law school found that courts upheld patent validity for only 40% of patents involved in litigation. The number is not necessarily representative of the validity of all issued patents, but does indicate that the USPTO is not completely on top of things. As a result, the burden determining patent validity has been passed on the the legal system, at great cost to businesses and inventors.

Plot of the annual number of patent applications and issued patents since 1995.

Problems and solutions

The Leahy-Smith America Invents Act was signed by the president on September 16th, 2011. The act acknowledges the severity of the patent problem and implements improvements to legally recognized inventorship and post-grant opposition. Though these changes should help alleviate some of the more pernicious problems with today’s system, we are stuck in a quagmire that runs much deeper.

Subsequent articles will develop three prominent facets of the patent office predicament. The first will detail the limited and overworked human resources. Despite persistent efforts to increase both the number of patent examiners and examiner performance, the USPTO is still unable to keep up with the pace of new applications. The second will address inherently limited access to informational databases, making effective prior art searches under the current patent system difficult with these limited resources. The final article addresses the expertise disparity between patent examiners and researchers. Though the USPTO is making progress to address these difficulties, it is working within a system that is out-of date. New approaches should more effectively employ modern tools to increase collaboration and effective information management.

Technology, a significant part of the problem, will no doubt play an important role in this solution though there is not one technological fix. Simply put in the words of Under Secretary David Kappos from his director’s message in the 2009 USPTO Annual Report:

“Our technological infrastructure has been neglected, threatening the ability of the USPTO to drive future growth. We need to implement a robust information technology system capable of supporting all of the USPTO’s operations on a continual basis, and capable of facilitating full electronic patent and trademark processing.”