The Director of the United States Patent and Trademark Office (USPTO) has announced a controversial plan, "The 21st Century Strategic Plan," intended to improve the efficiency of the Office and to enable it to handle what seems to be an ever-increasing number of patent applications each year. The key to the plan is to improve the quality of the corps of examiners by improved training and heightened entry requirements and to have the Office's patent operation concentrate on what the Director identifies as its key task, namely the determination of the patentability of applications submitted to it. In this way the resources of the Office will be able to be used more effectively and applications examined more efficiently.

To this end, the Director believes that examiners should not generally be burdened with the task of searching to determine relevant prior art, but rather should be charged with consideration of whether, once the relevant prior art has been identified, the application meets the statutory requirements for patentability over that prior art. According to the plan, four alternatives are proposed for determining prior art.

Consequent upon the separation of searching from examination inherent in this plan, it is expected that the number of additional examiners that will need to be hired will be cut significantly. Additionally, examination will now have to be requested separately, such a request being made after a search has been carried out but in any case no later than eighteen months from the earliest U. S. filing date in the case where options 1, 3 or 4 are used for the search or thirty months from filing in the case of option 2.

It is proposed that it should be possible to obtain expedited examination by payment of an additional fee.

Another feature of the plan is to move to electronic filing of patent applications. The USPTO recognizes that the system that it has used for this until now has not been popular with patent applicants and now proposes to adopt a new system that will be based on collaborative efforts with other Patent Offices, including the European Patent Office and the Japanese Patent Office. It is anticipated that the new system will become operational by the end of 2004.

In order to increase the ability of the USPTO to deal with cases where patents have been wrongly issued, it is proposed to introduce a post-grant review of granted patents where, for a period of one year from grant or four months from being threatened with an action for infringement, the public may petition the USPTO to cancel one or more claims of a granted patent. The person seeking review would have to make "a sufficient initial showing of unpatentability." However, if this were done, the case would be submitted to the Board of Patent Appeals and Interferences to make a determination of the issue within one year. Both parties would be required to disclose all relevant information and the patentee would be given one opportunity as of right to make narrowing amendments to the claims under consideration. Evidence in chief would be given in writing with cross-examination permitted where necessary. An appeal from the Board to the Court of Appeals for the Federal Circuit would be possible.

A further feature of the new plan which the USPTO hopes will become law shortly, ahead of the other matters discussed above, is intended to reduce the workload on examiners by substantially increasing the fees to be charged when an application includes more than twenty claims or more than three independent claims. The proposal is that such fees should double for each of the fourth, fifth and sixth independent claims and thereafter increase at a rate of 125% of the fee for the preceding independent claim. A similar scale is also proposed for total numbers of claims over twenty, but in this case, the increase is step-wise in groups of five claims. Thus, in response to questions about its proposed fee structure, the USPTO has advised that, under its proposals, excess claims fees for an application having 3 independent and 50 total claims would amount to $15,000 compared to a cost of $540 under the present fee schedule! It is also contemplated that, in order to reduce duplication of effort, a surcharge may be payable when filing continuation applications. Furthermore, in order to reduce the time of pendency of applications, fees for obtaining extensions of term for responses to Official Actions will increase significantly.