USPTO Has Opportunities to Improve Its Internal Controls and Oversight Related to PTA and PTE Calculations

Submitting OIG:

Report Description:

For our final report on the evaluation of the United States Patent and Trademark Office’s (USPTO’s) Patent Term Adjustment (PTA) and Patent Term Extension (PTE) processes, our objectives were to determine whether USPTO (1) calculates and awards PTA and PTE in compliance with relevant statutes, regulations, and case law; (2) has adequate internal controls to ensure the proper calculation and award of PTA and PTE; and (3) uses valid and reliable data to calculate PTA and PTE. We contracted with The MITRE Corporation (MITRE)—an independent firm—to perform this evaluation. Our office oversaw the progress of this evaluation to ensure that MITRE performed the evaluation in accordance with the Council of the Inspectors General on Integrity and Efficiency’s Quality Standards for Inspection and Evaluation (December 2020) and contract terms. However, MITRE is solely responsible for the attached report and conclusions expressed in it.

Short / Alternative Report Title:

USPTO Can Improve Internal Controls and Oversight Related to PTA and PTE Calculations

Date Issued:

Tuesday, July 6, 2021

Agency Reviewed / Investigated:

Department of Commerce

Submitting OIG-Specific Report Number:

OIG-21-030-I

Component, if applicable:

U.S. Patent and Trademark Office

Location(s):

Agency-Wide

Type of Report:

Inspection / Evaluation

Questioned Costs:

Funds for Better Use:

Number of Recommendations:

View Document:

Attachment	Size
OIG-21-030-I.pdf	2.06 MB

Additional Details Link:

https://www.oig.doc.gov/Pages/USPTO-Has-Opportunities-to-Improve-Its-Internal-Co…

Recommendation Number	Recommendation Status	Significant Recommendation
1	Open	No
We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct the Commissioner for Patents to (1) mandate the use of the "safe harbor" form to claim the exception, and (2) ensure the inclusion of clear category and description definitions for applicants while keeping their focus on the task at hand (i.e., the document submission form).
2	Open	No
We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct Office of Petitions (OPET), Office of Patent Legal Administration (OPLA), and Office of the Chief Information Officer (OCIO) to implement, and keep up-to-date, a comprehensive set of requirements and specifications for the PTA calculator software to ensure continued compliance with current and emerging legislation and case law.
3	Open	No
We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct OPLA to coordinate with FDA and the U.S. Department of Agriculture (USD) to determine if electronic filing of PTE applications would be acceptable as a permanent practice after the current public health emergency has passed.
4	Open	No
We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct the Office of Patent Examination Support Services (OPESS) and the OCIO to: (1) determine the feasibility of implementing a workflow process or tool (similar to the examiner "docket" system) for Legal Instrument Esaminer (LIE) managers; and (2) add clarifying language to the document description codes in the Patent Application Locating and Monitoring (PALM) system to mitigate the risk of miscoded documents.
5	Open	No
We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct the Commissioner for Patents to implement a means to identify and remedy the types of events that typically require a manual review (e.g., IDSs) as they occur.
6	Open	No
We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct OPET to implement a pilot program to perform periodic, OPET-initiated reconsideration-like audits on a random sampling of PTA calculations.

Recommendation Number

Recommendation Status

Significant Recommendation

Additional Details

Open

We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct the Commissioner for Patents to (1) mandate the use of the "safe harbor" form to claim the exception, and (2) ensure the inclusion of clear category and description definitions for applicants while keeping their focus on the task at hand (i.e., the document submission form).

Open

We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct Office of Petitions (OPET), Office of Patent Legal Administration (OPLA), and Office of the Chief Information Officer (OCIO) to implement, and keep up-to-date, a comprehensive set of requirements and specifications for the PTA calculator software to ensure continued compliance with current and emerging legislation and case law.

Open

We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct OPLA to coordinate with FDA and the U.S. Department of Agriculture (USD) to determine if electronic filing of PTE applications would be acceptable as a permanent practice after the current public health emergency has passed.

Open

We recommend the Undersecretary of Commerce and Director of the U.S. Patent and Trademark Office direct the Office of Patent Examination Support Services (OPESS) and the OCIO to: (1) determine the feasibility of implementing a workflow process or tool (similar to the examiner "docket" system) for Legal Instrument Esaminer (LIE) managers; and (2) add clarifying language to the document description codes in the Patent Application Locating and Monitoring (PALM) system to mitigate the risk of miscoded documents.