The Time is Right to Locate a Regional Patent Examining Office in Hawaii

The U.S. Patent and Trademark Office is the Federal agency responsible for granting U.S. patents and registering U.S. trademarks. It advises the President, the Secretary of Commerce, and U.S. Government agencies on intellectual property (IP) policy, protection and enforcement; and promotes stronger and more effective IP protection around the world.

The USPTO’s annual budget of about $2 billion is supported by fee revenues generated from patent and trademark examining operations. Since 1992 Congress had been diverting agency fees of up to $100 million per year for deficit reduction in the general budget, a practice which has been curtailed in recent years. As a result of this fee diversion, and due to missteps in its decade-long modernization efforts, USPTO operations have become mired in increasing disarray. Examination and issuance of patents have been pushed back from a target pendency of 18 months from filing to over 36 months and longer. There are over 1,000,000 patent applications on the docket awaiting examination, and with over 450,000 applications being filed annually and expected to grow by 8% per year, the delays in pendency are widening.

The USPTO faces ever more serious challenges ahead. The increasing number and technical complexity of patent applications, coupled with the many challenges of hiring, training and retaining patent examiners, continues to confront the USPTO. Examination based on “prior art” resources has not kept pace with the explosion of bibliographic and references sources becoming available in multi-languages throughout the world. With understaffed and overworked examiners struggling to stay abreast of the growing avalanche of pending cases, confidence in the quality of issuing patents has steadily eroded. The Office’s current level of 9,500 employees (of which 6,000 are examiners) needs to be expanded significantly to catch up with its growing backlog of patent cases.

As stated in its Strategic Plan for 2007-2012 operations, the USPTO has as its primary strategic goal the optimization of quality and timeliness in its patent examination operations. It has identified the following key strategies to achieving this goal:

1. Enhance recruitment to hire 1,200 new patent examiners a year to 2012 and beyond, including examiners with technical degrees in emerging technology areas.
2. Expand telecommuting and explore establishing regional USPTO offices.
3. Expand its Training Academy to enhance the training of new examiners.
4. Explore partnerships with universities to offer IP courses to science and engineering students, and develop internship programs to train students in IP matters to create a ready pool of potential examiner candidates.
5. Adopt steps for retention of examiners with special skills, and experienced retirement-eligible managers and examiners (versus the current 95% turnover of examiners within 4 years).
6. Provide assistance to industry and research communities to develop additional databases for examiners to access potential prior art for examinations.

In May 2007, at the invitation of Governor Lingle, USPTO officials attended an international conference with the commissioners of the other major patent offices (Europe, Japan, Korea, China, and Australia) in Honolulu, and while here held a discussion with Hawaii officials and members of industry and the patent bar to explore the possibility of helping to meet the Patent Office’s strategic goals by opening a regional patent examining office in Hawaii. At the meeting, the following advantages of locating such an operation in Hawaii were noted:

1. Hawaii has a large, ethnically diverse pool of U.S. citizen science and engineering graduates and pool of expat graduates seeking employment in Hawaii estimated to total at least 1,600 per year.
2. The USPTO’s federal pay scale (with COLA and hiring and retention bonuses) is 30% higher and more compared to the average pay levels for Hawaii’s tech jobs.
3. Due to the higher pay and their desire to work in Hawaii, the retention rate for Hawaii hirees for patent examining positions at a Hawaii regional office is expected to be very high.
4. Hawaii’s universities and research centers excel in emerging science areas of increasing importance, such as biotechnology, agricultural technology, ocean and earth sciences, telemetry, communications, dual use defense technologies, and renewable energy.
5. Hawaii is an ideal venue for a far-west presence of USPTO operations, and for Asia-Pacific conferences on international patent and intellectual property policies.

A Hawaii regional patent examining office might start with an initial hiring of 50 – 100 new patent examiners to be trained by senior supervisory examiner trainers relocated or rotated here from the USPTO, staffing up to a corps of perhaps 500 examiners or more in 5 years. The examiners could be hired principally in science areas matched to Hawaii’s areas of technology excellence, but would be assigned patent cases from all over. The examiners’ progress through the USPTO’s training regime and examination operations in the first 2-3 years would need to be supervised at the regional office location, but senior examiners could later expand office operations by telecommuting from home offices. The regional office may require in the range of 40,000 square feet of leased space, for classrooms, large seminar rooms, examiner offices, and telecommunications facilities. A lead agency such as PICHTR, with experience in setting up training and advanced technology projects in the State, could be tapped as a local counterpart to work with USPTO training and office facilities personnel.

A Hawaii regional patent examining office would also be able to establish broader synergies with the Patent Office and with local technology and research communities. It would bring prestige and increased patent and IP awareness to Hawaii as an innovation center. Our universities would be invited to work in partnership with the USPTO to offer IP courses to science and engineering students, develop examiner internship programs, and provide career counseling for tech graduates as potential examiner candidates. Foreign science and engineering students (non-citizens) in Hawaii can also participate in external operations ancillary to the USPTO, such as for foreign technical translation of examination resources. For the USPTO, the Hawaii regional office would establish a far western presence for promoting U.S. and international patent and intellectual property policies. The regional office would also make Hawaii more visible as an Asia-Pacific venue for international patent and IP conferences.

With President Obama and his Administration taking a new trade policy focus toward Asia, the new Secretary of Commerce Gary Locke being more trade-oriented, and a new Director of the Patent Office about to be appointed, it is time to revisit the proposal to locate a regional patent examining office in Hawaii. The USPTO Strategic Plan and goals line up perfectly with the advantages Hawaii offers in terms of a large available pool of examiner candidates, high job attractiveness and retention, supporting universities and research centers, a far western presence in the United States for the USPTO, and an international conference venue on patent and IP policies.