A Conversation With the Commissioner for Patents: Part 2

Earlier in 2020, LexisNexis® IP was honored to have USPTO Commissioner for Patents Drew Hirshfield join a webinar panel to discuss the state of the United States patent office. In our recent article, “A Conversation With the Commissioner for Patents (Part 1),” we distilled down some USPTO patent statistics discussed by the panel to help better understand how the USPTO is adapting to the turbulent times of today. In Part 2 we take a deeper look at the changes that will soon be implemented by the USPTO, and how those changes will impact patent prosecution.

Switching Up Patent Classification

Back in 2010, the USPTO entered into an agreement with the European Patent Office (EPO) to jointly implement the Cooperative Patent Classification (CPC) scheme for classifying patent applications. Effective October 2020, the USPTO will complete its transition to the CPC and away from its previously used United States Patent Classification (USPC) system.

Patent classifications play an important role at the USPTO, as they are used to identify the types of technologies described in patent applications, to match each patent application to a qualified patent examiner for examination, and to help patent examiners effectively search for and retrieve prior art. The CPC is a more flexible and up-to-date system of classification than the USPC, and, considering that close to 50 other patent offices around the world utilize the CPC, the USPTO’s transition puts the patent world one step closer to international harmonization. While the differences between the CPC and USPC may seem subtle, the consequences of the USPTO’s transition should be considered carefully by USPTO patent practitioners.

The CPC and Patent Application Ruling

One of the biggest impacts of the USPTO’s CPC transition is how future patent applications will be routed and assigned to USPTO patent examiners for examination. Under the USPC scheme, each newly filed patent application is assigned a single USPC classification code, or “classification symbol,” based on the technology described in the application’s most comprehensive claim. A patent application is then passed along to the group art unit that corresponds to the USPC classification symbol, and the patent application is then assigned to one of the many patent examiners who make up that art unit.

Under the CPC, a single patent application can be assigned multiple CPC classification symbols, assuming that the patent application relates to multiple disciplines or technologies. Appropriate classification symbols will also be determined by looking at each patent application’s entire disclosure, and classification symbols will not be based solely on application claims. The USPTO’s new patent application routing process will take advantage of the CPC’s flexible classification approach to better match patent applications to the patent examiners who are best suited to examine them based on examiner work experience. Patent examiners with the most experience in the CPC classifications assigned to a new application will be considered highly for assignment. After taking into account potential examiners’ qualifications, workloads and suitability for assignment to other new cases, a single examiner will be selected to handle the case.

CPC Impacts on Patent Professionals

Patent practitioners who leverage USPTO patent statistics and patent analytics will certainly notice a change to the role of art units within the USPTO. Having once been an important part of the patent application routing process, art units will now primarily be used to ensure adequate examiner training within the patent office. As a result, patent professionals may also find that art unit patent statistics now play a lesser role in developing patent prosecution strategies.

Overall, the USPTO’s transition to the CPC will be beneficial to all participants involved in the patent process. United States patent processes will be more in tune with other patent systems around the world, and USPTO patent applications will most likely receive better evaluation by the most qualified USPTO patent examiners. Additionally, although outside contractors will initially be used by the USPTO to facilitate patent application routing to examiners, the USPTO has plans to turn routing and examiner assignments over to automated, artificial intelligence processes in the future.

As the patent world evolves, LexisNexis IP patent portfolio management software and patent analytics tools are right there with it. For the full take on the USPTO’s upcoming evolutionary changes, you can now view the full “A Conversation With the Commissioner: A Look Inside Patent Processes at the USPTO” webinar recording online. For a summary of the state of the USPTO in 2020, check out Part 1 of “A Conversation With the Commissioner for Patents.”