Contents (pdf ver.)
Today, the United States
Patent and Trademark Office (USPTO) is under siege. Patent application
filings have increased dramatically throughout the world. There are an
estimated seven million pending applications in the world’s examination
pipeline, and the annual workload growth rate is in the range of 20-30
percent. Technology has become increasingly complex, and demands from
customers for higher quality products and services have escalated. Our
applicants are concerned that the fees they pay to have their patent and
trademark applications examined are being diverted for other purposes, thereby
jeopardizing the benefits intellectual property rights bring to our national
economy. In the United States, these demands have created substantial
workload challenges in the processing of patents. The Congress, the
owners of intellectual property, the patent bar, and the public-at-large have
all told us that we must address these challenges aggressively and
We agree. We
believe that the USPTO must transform itself into a quality-focused, highly
productive, responsive organization supporting a market-driven intellectual
property system. And we believe that we have the tools, the skills,
the will and the plan to do so.
• The tools: The technology
exists to create a high-quality, cost-effective, responsive, paperless
patent examination process, building on our current success in automating
• The skills: We have a cadre
of talented staff with the expertise and the vision to help guide and
support the technical and, even more important, the cultural transformation
of the USPTO.
• The will: Organizational
transformations require sustained commitment and constancy of purpose “from
the top.” The USPTO leadership is dedicated to this task.
• The plan: This strategic plan
lays out our approach for creating, over the next five years, an agile,
capable and productive organization fully worthy of the unique
leadership role the American intellectual property system plays in both the
American and the global economies.
This new 21st
Century Strategic Plan is aggressive and far-reaching. However, anything
less would fall short of the expectations of the U.S. Congress, the applicants
for, and owners of, patents and trademarks, the patent and trademark bar, and
the public-at-large. Additionally, the failure to adopt this strategic
plan would have serious negative consequences. We would be unable to
implement our quality and e-Government initiatives, pendency would rise
to uncontrollable levels, and our costs would continue to grow.
After the implementation
of this strategic plan:
• Market forces will drive our business
• Geography and time will be irrelevant when
doing business with the USPTO.
• We will strengthen our ability to be
ranked as one of the highest quality, most-efficient intellectual property
organizations in the world.
• Our products and services will be tailored
to meet the needs of customers.
• Examination will be our core
• Our employees will be recognized as expert
• Independent inventors, U.S. industry and
the public will benefit from stronger, more enforceable intellectual
property rights worldwide.
• Our workplace will become a state-of-the
art facility designed for the 21st Century.
• Costs will be almost half-a-billion
dollars less than under a business-as-usual scenario.
• Fees will remain steady for the
About the 21st
Century Strategic Plan
This five-year strategic
plan reflects both a thorough internal process review and a systematic attempt
to incorporate the best-thinking of our applicants, our counterparts in
Europe, Japan and other countries, and our stakeholders. Key
stakeholders also include our dedicated employees, without whose commitment
the strategic plan could not have been developed and its success could not be
The strategic plan takes
a global perspective by envisioning the patent and trademark systems of the
future that American innovators would need to remain competitive around the
world. It is built on the premise that American innovators need to
obtain enforceable intellectual property rights here and abroad as seamlessly
and cost-effectively as possible. It emphasizes the need for the USPTO
to collaborate with other intellectual property organizations in automation,
global patent classification, and mutual reliance on search results.
Finally, the plan is predicated not only on behavioral changes within the
USPTO, but appropriate behavioral changes by all players in the intellectual
The strategic plan is
supported with detailed documentation analyzing all of the related issues, a
five-year implementation plan with identified critical tasks, proposed
revisions to the fiscal year 2003 budget request to enable early
implementation of the strategic plan, and corresponding proposed legislation
and regulations necessary for a successful multi-year
plan cannot succeed without enactment of the President’s fiscal year
2003 budget, legislation changing the USPTO’s current fee schedule,
revisions to current rules, and legislation for streamlining the patent
and trademark systems to facilitate these changes.
|The USPTO will
lead the way in creating a quality-focused, highly-productive,
responsive organization supporting a market-driven
intellectual property system for the 21st Century.
We believe that quality
must permeate every action taken by every employee of the USPTO. The new
initiatives in our strategic plan are targeted toward timeliness,
e-Government, employee development and competitive sourcing – all with a
central quality focus.
|The USPTO mission is to ensure that the intellectual property
system contributes to a strong global economy, encourages investment in
innovation, fosters entrepreneurial spirit, and enhances the quality of
life for everyone.|
In order to accomplish
our mission, we have prepared this strategic plan. Provided we receive
the funding and statutory changes necessary to implement this new strategy, we
• Enhance the quality of patent and
trademark examining operations through consolidation of quality assurance
activities in fiscal year 2003.
• Achieve an average time to first action in
patent applications that is more than 50 percent lower than the time
projected in the 2003 Business Plan1 ; i.e., 5.8 months in
2008 rather than 12.3 months.
• Achieve and maintain 18 months patent
pendency2 by 2008, compared to over 25 months in the 2003
• Accelerate processing time by implementing
e-Government in Trademarks by October 1, 2003, and in Patents by October 1,
• Reduce total patent examiner hires through
fiscal year 2008 by 2,500 compared to the 2003 Business Plan
• Competitively source classification and
search functions, and concentrate Office expertise as much as possible on
the core government functions.
• Expand our bilateral and multilateral
discussions to strengthen intellectual property rights globally and to
reduce duplication of effort among offices.
1 The 2003 Business Plan
was submitted to the Congress in February 2002 as part of the USPTO’s fiscal
year 2003 President’s Budget.
Pendency, or the time to process a patent application, will be measured from
the time the applicant requests examination, consistent with the method used
To achieve our vision and
accomplish our mission, we must transform our organization and become a more
agile, more capable and more productive USPTO. The Congress has directed
us to (1) improve patent and trademark quality, (2) aggressively implement
e-Government to handle the workload associated with the 21st
Century economy, and (3) reduce patent and trademark pendency. We have
identified three strategic themes that correspond directly to these
economy. We will work, both bilaterally and multilaterally, with our
partners to create a stronger, better-coordinated and more streamlined
framework for protecting intellectual property around the world. We will
transform the USPTO workplace by radically reducing labor-intensive paper
We will transform the
USPTO by adhering to these themes in each of the improvement initiatives upon
which this strategic plan is based, as well as in all of our other
programs. These initiatives are discussed in more detail under each of
the major theme sections.
Agility: Address the 21st Century Economy By
Becoming a More Agile Organization
organization responds quickly and efficiently to changes in the economy,
the marketplace, and the nature and size of workloads. In pursuit of an
agile organization, the USPTO will focus both internally and
As a first priority, we
have made electronic end-to-end processing of both patents and trademarks the
centerpiece of our business model.
We will create a nimble,
flexible enterprise that responds rapidly to changing market conditions.
We will make the USPTO a premier place to work; we will rely on a smaller
cadre of highly trained and skilled employees; and we will place greater
reliance on the private sector, including drawing on the strengths of the
information industry. We will enhance the quality of work life for our
employees by exploring expansion of work-at-home opportunities and moving to
the new Carlyle campus facility in Alexandria, Virginia.
Further, we will
establish alliances with our friends in other national and international
intellectual property organizations to strengthen American intellectual
property rights around the world.
Specific actions, with
parenthetical cross-references to the analyses and implementation plans in the
Implement automation for
patent and trademark applications
• Develop a trademark electronic file
management system and begin e-Government operations on October 1,
2003. [E-Government 1]
• Deliver an operational system to process
patent applications electronically by October 1, 2004, including electronic
image capture of all incoming and outgoing paper documents.
• Develop an automated information system to
support a post-grant patent review process. [E-Government
• Establish an information technology
security program for fully certifying and accrediting the security of every
automated information system. [E-Government 4]
• Provide maximum availability of computer
systems to examiners, attorneys, the public and other patent and trademark
offices in the event of an outage. [E-Government 5]
• Increase the efficiency and return on
investment of our work-at-home program and thereby encourage more employees
to participate. [Work-at-home 1]
through greater reliance on the private sector or other intellectual property
• Increase reliance on the private sector or
other intellectual property offices for:
• Classifying patent documents.
• Supporting national application and
Patent Cooperation Treaty search activities. [Flexibility 2]
• Transitioning to a new global patent
classification system. [Flexibility 3]
• Classifying trademark goods/services
and searching design codes. [Flexibility 4]
Streamline intellectual property systems and strengthen intellectual property
rights around the world
• Promote harmonization in the framework of
the World Intellectual Property Organization and its Standing Committee on
the Law of Patents; resolve major issues in a broader context and pursue
substantive harmonization goals that will strengthen the rights of American
intellectual property holders by making it easier to obtain international
protection for their inventions and creations. [Global Development
• Negotiate bilateral and multilateral
agreements to facilitate global convergence of patent standards.
[Global Development 2]
• Accelerate Patent Cooperation Treaty
reform efforts, focusing on the USPTO’s proposal for simplified
processing. [Global Development 3]
• Develop a “universal” electronic
application by leveraging the United States’ experience with electronic
filing of trademark applications. [Global Development 4]
Share search results with
other intellectual property offices
• Reduce duplication of effort and decrease
workload by relying on search results obtained via partnerships with other
intellectual property offices. [Work Sharing 1]
Accelerate processing time by implementing e-Government in Trademarks by
October 1, 2003, and in Patents by October 1, 2004.
Competitively source classification and search functions, and concentrate
USPTO expertise as much as possible on its core government
Expand our bilateral and multilateral discussions to strengthen intellectual
property rights globally and to reduce duplication of effort among
intellectual property offices.
Capability: Enhance Quality Through Workforce and Process
organization has a highly skilled, appropriately sized workforce; it has
systems and procedures that enhance the capability of every employee; and it
has in place effective quality management processes to ensure high quality
work and continuous performance improvement. In other words, a
capable organization is committed to doing the right job right – the
first time and every time. We will be such an organization.
Quality will be assured
throughout the process by hiring the people who make the best patent and
trademark examiners, certifying their knowledge and competencies throughout
their careers at the USPTO, and focusing on quality in all aspects of the
examination of patent and trademark applications. By bolstering
confidence in the quality of U.S. patents and trademarks, the USPTO will
enhance reliability in the quality of products and services needed to
increasingly spur our economy and reduce litigation costs.
Specific actions, with
parenthetical cross-references to the analyses and implementation plans in the
capabilities by certifying competencies
• Create an enterprise-wide training
strategy that meets the needs of the new business model and the e-Government
generation. [Transformation 1]
• Restructure the USPTO by redirecting
resources to core examination activities, implement revised performance
plans to incorporate changes required to implement an e-Government
workplace, meet agency-wide standards for senior executives, and implement
selected award packages. [Transformation 2]
• Transform the workforce by exploring
alternative organizational concepts and structures. [Transformation 3]
• Ensure that professionals, support staff
and supervisors responsible for the patent process possess the requisite
skills needed to carry out their responsibilities. [Transformation
• Address employee skills needed for
e-Government within patents and trademarks. [Transformation
• Implement pre-employment testing for
patent examiners. [Transformation 6]
• Recertify the knowledge, skills and
abilities of primary examiners to ensure currency in patent law, practice
and procedures. [Transformation 7]
• Certify the legal competency and
negotiation abilities of patent examiners before promotion to grade
13. [Transformation 8]
• Improve the selection and training of
supervisory patent examiners to focus on their primary responsibilities of
training patent examiners and reviewing and approving their work.
Make improvements in
patent and trademark quality assurance techniques
• Enhance the current quality assurance
programs by integrating reviews to cover all stages of examination.
• Expand reviews of primary examiner
work. [Quality 2]
• Engineer quality into our processing,
including the selective expansion of the “second-pair-of-eyes”
review3 of work products in such advanced fields of
technology as semiconductors, telecommunications, and biotechnology.
• Incorporate an evaluation of search
quality into the patent work product review process, and survey
practitioners on specific applications. [Quality 4]
• Enhance the reviewable record of
prosecution in patent applications. [Quality 5]
secondary review of applications for proper claim interpretation and to
ensure that the closest prior art has been discovered and correctly
• Certify and monitor the quality of newly
created searching authorities to ensure that patent searches provided by the
private sector or other patent offices are complete and of high
quality. [Quality 6]
Make process improvements
that contribute to enhanced quality through legislative/rule
• Propose legislation and/or rule changes
that have been identified as critical for the accomplishment of this
strategic plan. Continue the process of seeking comments from
stakeholders on proposed changes.
• Enhance the quality of patent and
trademark examining operations through a comprehensive quality assurance
program in fiscal year 2003.
Productivity: Accelerate Processing Times Through Focused
We are committed to
promoting advances in technology, expansion of business opportunities and
creation of jobs through the timely issuance of high quality patents and
trademarks. A productive organization maximizes its output of
work performed. Improved productivity is key to reducing pendency and
This strategic plan, when
fully implemented, would ensure a steady 18-month average pendency time in
Patents – by far the fastest in the world – and a 12-month pendency time in
Trademarks. This will be accomplished through a radical redesign of the
entire patent search and examination system based upon four examination
tracks, greater reliance on commercial service providers, and variable,
incentive-driven fees. Likewise, Trademarks will restructure the way it
does business to be compatible with an e-Government environment.
secondary review of applications for proper claim interpretation and to ensure
that the closest prior art has been discovered and correctly
Specific actions, with
parenthetical cross-references to the analyses and implementation plans in
market-driven examination options
• Adopt procedures that give greater
choice and flexibility to trademark applicants for filing and examination
of applications for the registration of trademarks, with a focus on using
technology to improve the process and provide a lower cost filing
option. [Pendency 1]
• Move from a “one-size-fits-all” patent
examination process to a four-track examination process that leverages
search results of other organizations and permits applicants to have
freedom of choice in the timing of the processing of their
applications. This new process will eliminate duplication of effort,
encourage greater participation by the applicant community and public,
permitting lapse of applications when examination is not requested, and
improving the quality of our patents and decreasing processing time.
• Reduce the number of claims presented
for examination in an application and the size of applications through
fee-setting legislation. [Pendency 3]
• Achieve greater examiner productivity by
reducing their prior art search burden. [Pendency 4]
accelerated examination path option
• Offer patent applicants the
market-driven “new rocket docket” option of choosing an accelerated
examination procedure with priority processing and a pendency time of no
longer than 12 months. [Accelerated Examination 1]
for timely and high quality patents and trademarks
and the USPTO
• Seek legislation to restructure the
USPTO fee schedule by October 1, 2002, and thereby create incentives and
disincentives that contribute to achievement of USPTO goals, for example,
the filing fee will be reduced to incentivize applicants to file, and a
separate examination fee will be established to permit applicants to
choose the timing for examination. [Shared Responsibility
• Make patents more reliable by proposing
amendments to patent laws to improve a post-grant review of patents.
[Shared Responsibility 2]
Achieve an average time to first action in patent applications that is more
than 50 percent lower than the time projected in the fiscal year 2003 Business
Plan; i.e., 5.8 months in 2008 rather than 12.7 months.
Achieve and maintain 18 months patent pendency by 2008, compared to over 25
months in the 2003 Business Plan. [See Figure 1 on page
Reduce total patent examiner hires through fiscal year 2008 by 2,500 compared
to the 2003 Business Plan projection. [See Figure 2 on page 10]
1. Patent Examiner Hiring Comparison
2. Patent Pendency Comparison
commitments outlined in this strategic plan demand extraordinary effort from
every USPTO employee and the full support of our key stakeholders. Our
strategic plan is built around the following critical needs.
We will need to
consult with, and receive the support of, other patent offices in
structuring new bilateral and multilateral initiatives.
We will need enactment
of legislation by the Congress to adjust certain patent and trademark fees
by October 1, 2002. We also will need to promulgate final rules to
effect fee changes.
We will need to
continue working to develop the proposed legislative and rule changes that
have been identified and continue the process of seeking comments from
interested parties on ways to improve our operations.
We will need to notify
the three bargaining units representing USPTO employees of proposed changes
and negotiate, where necessary, any changes in working
We will need enactment
of an appropriation for fiscal year 2003 that is consistent with the level
of the President’s 2003 budget.
Move to Carlyle in
We will need to
concentrate on the high priority of relocating to a consolidated campus in
Alexandria, Virginia, while minimizing any adverse effects on employees,
applicants and the public. The USPTO is quickly moving into the
implementation phase of the relocation of its facilities from 18 buildings
spread throughout Crystal City to a single lease in a consolidated
campus. This consolidation is expected to save $72 million over the
20-year term of the lease, but it is a highly complex and difficult
President’s Management Agenda
Secretary Donald Evans
has committed the Department of Commerce to speedy implementation of the
President’s Management Agenda. President Bush has stated that true
government reform must be based on a reexamination of the role of the Federal
government. In this regard, he has called for “active, but limited”
government: a government that empowers states, cities, and citizens to
make decisions; ensures results through accountability; and promotes
innovation through competition. The reforms he has identified to help
the Federal government adapt to a rapidly changing world include a government
• Citizen-centered – not
• Results-oriented – not process-oriented;
• Market-based – actively promoting, not
stifling, innovation, and competition.
This strategic plan
supports the President’s Management Agenda:
– We will provide the tools and the resources to ensure that we have a
highly qualified, certified, knowledge-based, accountable workforce.
Specifically, we will strengthen pre-employment testing, develop a
competency certification program; create a new labor-management paradigm to
meet changing business needs; streamline our workforce to maximize quality and
efficiency; and focus our training, performance evaluation and assessment
environment on our core expertise – examination.
Sourcing – We are committed to achieving performance enhancements and
cost-savings, through the process of competitive sourcing. This process
compares the capabilities and costs of commercial service providers with
current government program providers. Greater competition drives down
costs and yields more innovative solutions. We will seek improved
effectiveness in the following areas: patent and trademark searching, patent
document classification, and information technology and logistical support
Management – The USPTO has a strong, fully integrated financial
management system in place and we will continue to strengthen our internal
controls, improve the timeliness and usefulness of our management information
and continue to achieve an unqualified financial audit opinion.
– We are accelerating the deployment of critical automated information
systems, particularly electronic end-to-end processing of patent and trademark
applications. In addition, we are currently working on ways to improve
delivery schedules, reliability, performance, security and the cost of all of
our automated information systems.
Integration – We will allocate budget resources based on the concept
of linking them to the achievement of both enterprise-wide goals and
individual unit performance. The USPTO will expand the involvement of
applicants and the public in assessing the accomplishment of our goals and
As a reflection
of our commitment to fund our strategic priorities, we have identified
over $81 million in fiscal year 2003 resources that we will redirect to
the examination process.
This strategic plan is
only the first step toward creating a quality-focused, highly productive,
responsive USPTO that supports a market-based intellectual property system for
the 21st Century. Once the initial phases of this plan have
been supported, adopted and implemented, the USPTO
will explore further
options to enhance its ability to more operate like a business.
Within the framework of
the legislative and regulatory packages there are a number of items that will
be implemented in the out years of the strategic plan:
practice – We will continue to explore the treatment of applications
containing multiple inventions at the international level in connection with
WIPO’s Standing Committee on Patents and within the framework of the
Trilateral Offices (Europe, Japan, and the U.S.). Therefore, any
changes to restriction practice would be considered within the context of
this international framework.
adjustment – Before seeking legislation to simplify patent term
adjustment, we will explore a number of options to address this issue with
the small business community and other key stakeholders.
exploitation of examination results – We will take a cautious
approach to mutual exploitation of examination results by first evaluating
International Preliminary Examination Reports that are generated during
national stage examination. We will then consider whether the
acceptance of examination results (granted patents) from foreign offices is
a proper basis for use in counterpart applications in the United
States. However, the USPTO will never recommend any changes that would
compromise our sovereign right to determine patentability issues or to
preclude our right to make further examinations when necessary.
issues – As part of the implementation of the electronic file
wrapper, we will ascertain the best means for assuring that these documents
in an application file that may be subject to copyright protection can be
included in the USPTO’s databases. The intent of this option would be
to ensure full public access to all the information contained in a pending
request for reexamination – As part of the initiative to seek
post-grant review legislation, we will explore the need for retention of
third-party requested reexamination.
actions – We will evaluate the desirability of revising the
provisions for judicial review of USPTO decisions to make an appeal to the
U.S. Court of Appeals for the Federal Circuit the sole avenue for judicial
review of a Board of Patent Appeals and Interferences or the Trademark Trial
and Appeal Board decision.
Cooperation Treaty Activities – We will actively pursue revisions to
Patent Cooperation Treaty search and examination guidelines to achieve an
enhanced level of reliance on International Search Reports and International
Preliminary Examination Reports.
practices – We also will explore whether we have a good
justification for operating in a more business-like manner.
– Once we have settled into the Carlyle campus and have fully
implemented automated patent and trademark processing, we will be able to
assess the feasibility of expanding our work-at-home program by using such
virtual office concepts as telecommuting and flexible workplace to the
Training – We will evaluate the feasibility of reinstating the
Examiner Education Program through corporate sponsorship to enable patent
examiners to gain better insights into technological developments in the
fields in which they examine.
Century Strategic Plan sets forth an ambitious agenda to resolve the crisis
all intellectual property organizations are facing. We believe
economic and technological progress in the United States and the global
market can be significantly enhanced through the implementation of the
initiatives proposed in this plan.
We intend to refine and
update our strategic plan periodically to adjust to changing conditions and
to incorporate the best thinking of the entire intellectual property
community. We are eager to work with those who believe, as we do, that
American innovators and businesses must have the very best intellectual
property system in the world. This 21st Century Strategic Plan
represents an important first step in the pursuit of this goal.