USPTO releases strategic plan for 2007-2012March 26, 2007

Today the USPTO released its strategic plan for the next five years, 2007-2012. The summary is available here, and the full plan here. Some thoughts on the strategic plan after the jump.After a quick read-through, much of the strategic plan appears to be a “let’s keep doing what we’re doing right and stop doing what we’re not” kind of document, but there are a few items that should be noted. Patents

  • Of course, the ever-present “hire more examiners” mantra is present, but the a more encouraging item is the goal to “Develop alternatives to the current performance and bonus systems.” In addition to this, the USPTO will apparently “Explore partnerships with universities to offer IP courses to science and engineering students, develop an internship program, and train students in IP to create a ready pool of potential examiner candidates.” Increasing the examining corps is clearly on the minds of USPTO management.
  • One potential red flag for prosecutors is the goal to “Explore examination reform through the rule making process to create better focused examination and enhance information exchange between applicant and examiner.” While it’s not clear what this entails, the idea of creating “better focused examination and enhance information exchange” sounds a lot like the mandatory prior art search and examination support document from the USPTO’s accelerated examination program. It will be interesting to see what the USPTO has in mind here.
  • Software patents appear to be in the crosshairs with two items: “Encouraging submission of relevant prior art by participating with a consortium of patent users, applicants, attorneys, and members of the academic community to build a system to actively solicit prior art, especially with regard to software applications,” and “Provide assistance to the open source community in their development of an open source database to provide examiners with potential prior art.”


  • The USPTO is also concerned with application pendency on the trademark side. One of its listed methods to deal with this is to “Explor[e] timeline modifications for the Official Gazette opposition and publication process,” although exactly what potential modifications are being considered are not listed.
  • The rules of the TTAB may be modified to include initial disclosures and discovery conferences, to more mirror the Federal Rules of Civil Procedure in this regard. The plan specifically describes this as “Promulgating rules requiring parties in opposition and cancellation proceedings to participate in discovery conferences, make initial disclosure of information, and disclose potential witnesses.” This will likely be a welcome change to many practitioners before the TTAB.

The strategic plan also has goals related to improving IP protection and enforcement. One interesting comment here is that the USPTO will “provide leadership by assisting the Solicitor General of the United States in cases before the Supreme Court, particularly as the Court considers the obviousness standard in patent law,” referencing the currently-pending KSR Int’l Co. v. Teleflex, Inc. case. All in all, the strategic plan appears to be a step in the right direction. However, there are a few proposals that, depending on their implementation, could bring about some concerns. As always, we’ll be watching to see how these proposed changes are implemented.

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