Intellectual Property:

Key Processes for Managing Patent Automation Strategy Need Stengthening

GAO-05-336: Published: Jun 17, 2005. Publicly Released: Jun 17, 2005.

Additional Materials:

Contact:

Valerie C. Melvin
(202) 512-6240
contact@gao.gov

 

Office of Public Affairs
(202) 512-4800
youngc1@gao.gov

The volume and complexity of patent applications to the U.S. Patent and Trademark Office (USPTO) have increased significantly in recent years, lengthening the time needed to process patents. Annual applications have grown from about 185,000 to over 350,000 in the last 10 years and are projected to exceed 450,000 by 2009. Coupled with this growth is a backlog of about 750,000 applications. USPTO has long recognized the need to automate its patent processing and, over the past two decades, has been engaged in various automation projects. Accordingly, GAO was asked to, among other things, assess progress to date and any problems facing USPTO as it develops the capability to efficiently handle patent information electronically.

As part of its strategy to achieve a paperless, electronic patent process, USPTO had planned to deliver an operational patent system by October 2004. It has been able to deliver important capabilities, such as allowing patent applicants to electronically file and view the status of their patent applications and the public to search published patents. Nonetheless, after spending over $1 billion on its efforts from 1983 through 2004, the agency's existing automation has not provided the fully integrated, electronic patent process articulated in its automation plans, and when and how this process will be achieved is uncertain. Key systems that USPTO is relying on to help reach this goal--an electronic application filing system and a document imaging system--have not provided capabilities that are essential to operating in a fully electronic environment. Contributing to this situation is that the agency took an ad hoc approach to planning and managing its implementation of these systems, in which it lacked effective analysis of system requirements, alternatives, and costs; made acquisition decisions based on management judgment; and acquired software that did not meet its needs. USPTO's ineffective planning and management of its patent automation initiatives, in large measure, can be attributed to enterprise-level, systemic weaknesses in its information technology investment management processes. Although the agency had begun instituting essential investment management mechanisms, such as its enterprise architecture framework, it had not yet finalized its capital planning and investment control process nor established necessary linkages between the process and its architecture to guide the development and implementation of its information technology. The Under Secretary of Commerce for Intellectual Property and USPTO's chief information officer acknowledged the need for improvement, but specific plans for resolving problems have not yet been developed.

Recommendations for Executive Action

  1. Status: Closed - Implemented

    Comments: In September 2005 the agency reassessed its information systems used to support patent processing and approved development of an improved electronic filing system. Further, in May 2007 the agency approved development of a system to allow text-based processing. As a result of these actions, the Patent Office should be positioned to more effectively process patents through the use of information technology.

    Recommendation: To more effectively position USPTO to achieve key patent processing improvements through the use of information technology, the Secretary of Commerce should direct the Under Secretary of Commerce for Intellectual Property to reassess, and where necessary, revise the approach for implementing and achieving effective uses of major information systems to support a fully automated patent process, including electronic filing and image- and text-based patent processing capabilities.

    Agency Affected: Department of Commerce

  2. Status: Closed - Implemented

    Comments: In October 2005, USPTO created a new capital planning and investment control (CPIC) guide, made it available on the agency's Website, and provided new training on the completion of investment decision papers. Also beginning in October 2005, the agency required identification of costs, benefits, and other information on proposed investments as part of its CPIC process; and it refined the use of unique program codes aligned to System Development Life Cycle phases of its IT investments, allowing USPTO to track costs and spending against plans. These actions should help USPTO ensure that its automation initiatives are effectively planned and managed, and support the agency's mission.

    Recommendation: To more effectively position USPTO to achieve key patent processing improvements through the use of information technology, the Secretary of Commerce should direct the Under Secretary of Commerce for Intellectual Property to establish disciplined processes for planning and managing the development of patent systems based on well-established business cases that articulate agreed-upon business and technical requirements; include analyses of project alternatives, costs, and benefits; and include measures for tracking projects through their life cycle against cost, schedule, benefit, and performance targets.

    Agency Affected: Department of Commerce

  3. Status: Closed - Implemented

    Comments: In October 2005, USPTO created a new capital planning and investment control (CPIC) guide, made it available on the agency's Website, and provided new training on the completion of investment decision papers. Also beginning in October 2005, the agency required identification of costs, benefits, and other information on proposed investments as part of its CPIC process; and it refined the use of unique program codes aligned to System Development Life Cycle phases of its IT investments, allowing USPTO to track costs and spending against plans. Further, in November 2006, the agency chartered an Architectural Review Board to review enterprise architecture issues and to review IT investments. As a result of these actions, USPTO is now better positioned to ensure that its automation initiatives support the agency's mission and are aligned with the agency's enterprise architecture.

    Recommendation: To more effectively position USPTO to achieve key patent processing improvements through the use of information technology, the Secretary of Commerce should direct the Under Secretary of Commerce for Intellectual Property to fully institute and enforce at the enterprise level, information technology investment management processes and practices to ensure that automation initiatives support the agency's mission and are aligned with the agency's enterprise architecture, to include (1) finalizing and implementing a capital planning and investment control guide, (2) establishing an architecture review board and requiring its oversight of major information technology investments, (3) establishing a process to identify expected benefits to internal and external users of information systems and to measure performance against expected benefits, and (4) establishing a process for tracking and reporting aggregate cost information for automation initiatives.

    Agency Affected: Department of Commerce

 

Explore the full database of GAO's Open Recommendations »

Aug 1, 2014

Jul 23, 2014

Jul 8, 2014

Dec 5, 2013

Sep 10, 2013

Aug 22, 2013

Jun 20, 2013

May 9, 2013

Apr 4, 2013

Looking for more? Browse all our products here