In August 2009, David Kappos (former IP counsel for IBM) was appointed Director of the US Patent & Trade Mark Office (USPTO) by the Obama administration. Since then, the USPTO has undertaken a number of interesting and important initiatives. These initiatives in part seek to address one of the key issues presently facing the USPTO - the backlog of cases to be examined. The new developments also provide patent applicants with the opportunity to consider alternative prosecution strategies for their US patent applications. Some of these developments are discussed below.

1. Pilot program to accelerate examination for small entity applicants

Under this trial program, a small entity applicant (which includes individuals and companies with less than 500 employees) can have a pending application brought to the front of the queue for examination if they agree to abandon another of their applications. The application to be abandoned must not have been examined yet.

2. Pilot program to accelerate examination of “green” technologies

Under this pilot program, patent applicants can apply to have their green technology patent applications taken up for expedited examination. This will effectively reduce the time taken for the application to be examined by about 12 months. Technologies which are eligible for this program are those relating to environmental quality, energy conservation, development of renewable energy, or greenhouse gas emission reduction. Qualifying for expedited examination under this program will be significantly easier for green technologies than the conventional mechanism for having examination accelerated.

3. Rescinding of regulations to limit patent prosecution

In August 2007, the USPTO had sought to bring in new regulations which limited the number of claims to 25 (including a maximum of 5 independent claims) per application. The regulations also had intended to limit the number of times a patent applicant could effectively continue to prosecute an invention in the face of Examiner rejections. These regulations were highly controversial and GlaxoSmithKline had brought suit against the USPTO to prevent their implementation.

Shortly after taking up his appointment, David Kappos moved to rescind the new regulations (before they ever came into force) and to end the lawsuit brought by GlaxoSmithKline against the USPTO. Accordingly, patent applicants in the US still have a great deal of flexibility for continuing their prosecution of important inventions, despite rejections from an Examiner.

Kappos is also working to change the culture in the USPTO, and is encouraging US examiners to better engage with applicants, especially at the outset of examination. Initial indications suggest a positive change is occurring.