[Federal Register Volume 75, Number 107 (Friday, June 4, 2010)]
[Notices]
[Pages 31763-31768]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-13244]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0035]
Enhanced Examination Timing Control Initiative; Notice of Public
Meeting
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of public meeting; request for comments.
-----------------------------------------------------------------------
[[Page 31764]]
SUMMARY: This notice announces a public meeting to solicit public
opinions on an initiative being considered by the United States Patent
and Trademark Office (USPTO) to provide applicants with greater control
over when their applications are examined and to enhance work sharing
between intellectual property offices. Under the initiative, for
applications filed in the USPTO that are not based on a prior foreign-
filed application (e.g., that do not claim foreign priority benefit),
applicant would be able to: (1) Request prioritized examination (Track
I); (2) for non-continuing applications, request a delay lasting up to
30 months in docketing for examination (Track III); or (3) obtain
processing under the current procedure (Track II) by not requesting
either (1) or (2). For applications filed in the USPTO that are based
on a prior foreign-filed application, no action would be taken by the
USPTO until the USPTO receives a copy of the search report, if any, and
first office action from the foreign office and an appropriate reply to
the foreign office action as if the foreign office action was made in
the application filed in the USPTO. Following or concurrent with the
submission of the foreign office action and reply, applicant may
request prioritized examination or obtain processing under the current
procedure.
This initiative aims both to provide applicants with the type of
examination they need and to reduce the overall pendency of patent
applications (which currently stands at almost three years). Overall
pendency would be decreased in three ways: (1) Increased resources in
Track 1 would result in increased output; (2) reuse of search and
examination work done by other offices would result in greater
efficiency; and (3) applicants who chose Track III because their
applications were of lower value might ultimately decide not to pursue
their application examination efforts that had been expended on the
applications. As a part of the three-tracks, an applicant may request
and pay for a supplemental search from a participating intellectual
property granting office. Any member of the public may submit written
comments on this initiative being considered by the USPTO.
Dates and Times: The public meeting will be held on July 20, 2010,
beginning at 1:30 p.m.
Persons interested in attending the meeting must register by 5 p.m.
Eastern Standard Time (EST) on July 16, 2010.
Written comments must be submitted by August 20, 2010.
ADDRESSES: The public meeting will be held at the USPTO, in the South
Auditorium of Madison West, 600 Dulany Street, Alexandria, VA 22314.
Written comments should be sent by electronic mail message over the
Internet addressed to [email protected]. Comments may also be
submitted by mail addressed to: Mail Stop Comments-Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Robert A. Clarke. Although comments may be
submitted by mail, submission via e-mail to the above address is
preferable.
The written comments will be available for public inspection at the
Office of the Commissioner for Patents, located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available
via the USPTO Internet Web site (address: http://www.uspto.gov).
Because comments will be made available for public inspection,
information that is not desired to be made public, such as an address
or phone number, should not be included.
FOR REGISTRATION TO GIVE A PRESENTATION IN THE MEETING: If you wish to
make an oral presentation at the meeting, you must register by sending
an e-mail to the e-mail address, [email protected], by 5 p.m.
EST on July 13, 2010. See the registration information provided below.
FOR FURTHER INFORMATION CONTACT: Robert A. Clarke ((571) 272-7735),
Deputy Director, Office of Patent Legal Administration, directly by
phone, by e-mail to [email protected], or by mail addressed to:
Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450. For further information on supplemental
searches, contact Mary Critharis, 571-272-8468, Senior Patent Counsel,
External Affairs, directly by phone, or by e-mail to
[email protected].
SUPPLEMENTARY INFORMATION: This notice announces a public meeting to
solicit public opinions on an initiative being considered by the USPTO
to provide applicants with greater control over when their applications
are examined and to promote greater efficiency in the patent
examination process. For applications filed in the USPTO which are not
based on a prior foreign-filed application (e.g., that do not claim
foreign priority benefit under 35 U.S.C. 119(a)-(d)), an applicant
could: (1) Request prioritized examination; (2) for non-continuing
applications, request an applicant-controlled delay lasting up to 30
months prior to docketing for examination; or (3) obtain processing
under the current procedure by not requesting either (1) or (2). For
applications filed in the USPTO that are based on a prior foreign-filed
application, no action would be taken by the USPTO until the USPTO
received, in the U.S. application: (1) A copy of the search report, if
any; (2) a copy of the first office action from the foreign office
where the application was originally filed; and (3) an appropriate
reply to the foreign office action. Where the foreign office action
indicated that the foreign-filed application was allowable, all that
would be required for the appropriate reply would be notice to the
USPTO. Where one or more rejections were made in the foreign office
action, applicant's reply could include an amendment but would have to
include arguments regarding why the claims in the USPTO-filed
application were allowable over the evidence relied upon in the foreign
office action. Following or concurrent with the submission of the
foreign office action and reply, applicant could request prioritized
examination or obtain processing under the current procedure. This
proposal would increase the efficiency of the examination of these
applications by avoiding or reducing duplication of efforts by the
office of first filing and the USPTO. Because efficiency gains are
anticipated in the roughly one half of all applications that are filed
first abroad, the result should be substantial improvement in the
USPTO's performance. By contrast, under the PTO's primary current
mechanism for worksharing, the patent prosecution highway program,
scaling up has been limited by the fact that it remains voluntary and
can only be utilized in situations where the USPTO has not already
begun its examination work. Perhaps for this reason, major patent
filing jurisdictions like the Japanese and European patent office have
already adopted office-driven systems in which they address first the
applications for which they are the office of first filing.
Since the requirement to provide a copy of the search report, first
action and an appropriate reply is being considered to avoid or reduce
duplication of effort, the USPTO seeks comment on whether this
requirement should be limited to first filings at offices that have
qualified as international searching authorities under PCT Article 16.
In addition, in order to avoid delays in disclosure, the USPTO seeks
comment on whether the requirement to provide a copy of the search
report, first action, and an
[[Page 31765]]
appropriate reply (which would result in examination delay at the
office of second filing) should be limited to applications that are
published.
While it is believed that most applicants will continue to file
applications first in their national or regional office based on
business needs or costs of translation, comment is also requested on
whether the USPTO should anticipate a larger number of applications
being filed at the USPTO first rather than an applicant's national
office. Additionally, would this filing pattern change if (as proposed
in various patent law reform bills) a foreign filing date could be used
as a prior art date under US law?
The idea of office-driven worksharing, or SHARE (``Strategic
Handling of Applications for Rapid Examination'') has already been the
subject of some public commentary.
On October 21, 2009, the USPTO published a Notice in the Federal
Register inviting the public to submit written comments and participate
in a roundtable discussion on work sharing. See Request for Comments
and Notice of Roundtable on Work Sharing for Patent Applications, 74 FR
54028 (October 21, 2009). Many of the comments regarding SHARE raised
the concern that delayed examination of the foreign origin applications
may work a disadvantage to USPTO first filers with respect to the
patent term adjustment (PTA) that may accrue. This concern could be
addressed by giving all applicants some control on when their
application is examined so that the applicant can best benefit from the
patenting process. Specifically, under the current proposal, those who
file first in a foreign office can choose subsequently to accelerate in
the USPTO. Some were also concerned that SHARE would only work well if
coordinated with other offices. The coordination has already started
with some offices. For example, the USPTO and the Korean Intellectual
Property Office (KIPO) are conducting a small-scale pilot to gather
empirical data and test the feasibility of the SHARE concept. More
recently, the USPTO and the United Kingdom Intellectual Property Office
(UKIPO) committed to develop a plan to optimize reuse of work on patent
applications that are jointly filed with the USPTO and UKIPO.
Others suggested that the search or examination fees be reduced or
delayed. The instant proposal permits deferral of certain fees if Track
III examination is requested. Because many comments focused on
examination delays in the office of first filing, comments to this
notice are requested on whether PTA should be limited by a request by
applicant for deferred examination in the office of first filing.
Similarly, comments are also requested on whether PTA should be limited
if the applicant does not request accelerated examination in the office
of first filing.
The USPTO also intends to harmonize the existing examination
procedures for applications having been granted accelerated or
``special'' status including: (1) Applications under the accelerated
examination program; (2) applications under the various patent
prosecution highway programs; (3) applications advanced under other
programs under 37 CFR 1.102 (e.g., applicant's age or health); or (4)
national stage applications advanced out of turn because an
international preliminary examination report (IPER) prepared by the
United States International Preliminary Examining Authority or a
written opinion on the international application prepared by the United
States International Searching Authority states that the criteria of
novelty, inventive step (non-obviousness), and industrial
applicability, as defined in PCT Article 33(1)-(4), have been satisfied
for all of the claims presented in the application entering the
national stage. The USPTO is holding a public meeting and inviting
public comments to seek views on whether this initiative should go
forward and what changes should be considered. Further meetings may be
announced by the USPTO, as appropriate.
The USPTO recognizes that the traditional ``one-size fits all''
examination timing may not provide applicants much opportunity to
choose the examination timing they need. Therefore, in addition to the
current standard procedure (Track II), the USPTO is considering
providing applicants with greater ability to seek prioritized
examination (Track I) or, for non-continuing applications that do not
claim the benefit of a prior foreign-filed application, the ability to
seek an applicant controlled up to 30-month queue prior to docketing
for examination (Track III). By allowing applicants some control over
the timing of examination, it is anticipated that examination resources
would be better aligned with the needs of innovators.
Prioritized Examination (Track I): For some applicants with a
currently financed plan to commercialize or exploit their innovation or
a need to have more timely examination results to seek additional
funding, more rapid examination is necessary. While some programs are
currently available to prioritize applications (e.g., the accelerated
examination program and the petition to make special program), some
applicants neither want to perform the search and analysis required by
the accelerated examination program nor can they seek special status
based on the conditions set forth in 37 CFR 1.102. For such applicants,
the USPTO is proposing optional prioritized examination upon
applicant's request and payment of a cost recovery fee. A request for
prioritized examination may be made in a USPTO first-filed application
at any time and may be made in any other application only after receipt
of a copy of the search report, if any, and first action on the merits
from the intellectual property office in which the relied-upon
application was filed and an appropriate reply to that action in the
application filed in the USPTO. On granting of prioritized status, the
application would be placed in the queue for prioritized examination.
The fee would be set at a level to provide the resources necessary
to increase the work output of the USPTO so that the aggregate pendency
of non-prioritized applications would not increase due to work being
done on the prioritized application. The fee would also be set to
recover any other additional costs associated with processing the
prioritized application. For example, if work output is to be increased
by hiring new examiners, then the fee for prioritized examination would
include the cost of hiring and training a sufficient number of new
employees to offset the production work used to examine prioritized
applications. Under the USPTO's current statutory authority, the USPTO
is not permitted to discount the fee for small entity applicants.
Should the USPTO's authority to set fees be enhanced, it is anticipated
that the USPTO would discount this fee for small and micro entity
applicants, given the substantial fee that would need to be charged to
recover all of the costs associated with the contemplated service.
The USPTO is also considering limiting the number of claims in a
prioritized application to four independent and thirty total claims. In
addition, the USPTO is considering requiring early publication of
prioritized applications so that applications would be published
shortly after a request for prioritization is granted, or eighteen
months from the earliest filing date claimed, whichever is earlier.
All applications prioritized on payment of a fee, or accelerated or
advanced out-of-turn under existing programs, would be placed in a
single queue for examination on the merits and
[[Page 31766]]
would be taken up out-of-turn relative to other new or amended
applications. The goals for handling applications in this queue would
be to provide a first Office action on the merits within four months
and a final disposition within twelve months of prioritized status
being granted. If this process is implemented, the USPTO anticipates
that it would provide statistics on its progress in meeting these goals
on its Internet Web site.
To maximize the benefit of this track, applicant should consider
one or more of the following: (1) Acquiring a good knowledge of the
state of the prior art to be able to file the application with a clear
specification having a complete schedule of claims from the broadest
that the applicant believes he is entitled in view of the state of the
prior art to the narrowest that the applicant is willing to accept; (2)
filing replies that are completely responsive to the prior Office
action and within the reply period (shortened) set in the Office
action; and (3) being prepared to conduct interviews with the examiner.
Traditional Timing (Track II): Applications for which neither
prioritization nor an applicant-controlled up to 30-month queue prior
to docketing for examination is requested will be processed
traditionally, except that applicants may request prioritized
examination at any time (e.g., on filing of a notice of appeal) and,
for any non-continuing application, applicants may request an
applicant-controlled up to 30-month queue prior to being placed on the
docket for examination on the merits. An application that claims the
benefit of a prior-filed foreign application will not be docketed for
examination in Track II until: (1) A copy of the search report, if any,
(2) a copy of the first action on the merits by the intellectual
property office in which the priority application was filed, and (3) a
reply to that action in the application filed at the USPTO has been
received.
An applicant-controlled up to 30-month queue prior to docketing
(Track III): Some applicants file an application just prior to the
statutory bar date but before a commercially viable plan for
exploitation of the innovation has been developed or financed. To
better provide for the timing of examination that such applicants
desire and to provide a similar time period to that provided
internationally, the USPTO is considering permitting any applicant in
an application that does not claim benefit of a prior-filed foreign
application or prior non-provisional application to select, on filing
or in reply to a notice to file missing parts, an applicant-controlled
up to 30-month queue prior to docketing for examination. In order to
avoid delays in notice to the public, any application requesting Track
III must also be published as an 18-month patent application
publication. An application granted this status would be placed in a
queue for applicant to request examination and pay the examination fee
with the surcharge (if not already paid) within thirty months of the
actual filing date of the application or any relied-upon provisional
application (i.e., to which benefit is claimed under 35 U.S.C. 119(e)).
Failure to request examination within the 30-month period would result
in abandonment of the application. The request for examination and
examination fee (and surcharge) would be due on the 30-month date but
could be submitted early (e.g., on filing of the application) with a
request that the application remain in the pre-examination queue for a
period of time (e.g., up to 30 months from filing). On expiration of
the time period, the application would be placed in the queue for
examination.
On receipt of the request for this queue, the USPTO would determine
if the application was ready for publication as a patent application
publication (except for the receipt of the examination fee) and
determine if any request for nonpublication made on filing had been
rescinded. If both conditions were met, the application would be placed
in a queue to await a request for examination and payment of the
examination fee. If the application was not ready for publication, a
requirement to place the application in condition for publication would
be made and, once satisfied, the application would be placed in the 30-
month queue. The request for examination and payment may be made at any
time during the 30-month period. If no request is made within the 30-
month period, the application would be held abandoned. The examination
fee and the surcharge may be paid within the 30-month period or may be
submitted after a timely request for examination is filed on notice of
non-payment by the USPTO, along with any required extension of time
fees.
Upon receipt of the examination request and fee, the application
would be placed in the queue for examination, but the receipt date of
the examination request would be used as the ``date in queue.'' Thus,
the application will be taken up for examination as if the request date
was the application's actual filing date. If applicants determine that
more rapid examination is desirable, then they may request (and pay the
required fee) for prioritized examination while the application is in
the queue for examination.
Currently, the USPTO is considering a rule to offset any positive
PTA accrued in a Track III application when applicant requests that the
application be examined after the aggregate average period to issue a
first Office action on the merits. For example, if the aggregate
average time to issue a first Office action is 20 months and applicant
requests that the application be examined at month 30, the proposed PTA
reduction would be 10 months beginning on the expiration of the 20-
month period and ending on the date on which applicant requested
examination to begin. The overlap with the aggregate average period
when the USPTO would not be able to have issued a first Office action
on the merits would not be treated as an offsetting reduction.
Similarly, for an application in any of the three tracks that
claims foreign priority, the USPTO is considering a rule to offset
positive PTA accrued in the application when applicant files the
required documents (that include a copy of the search report, if any,
and first office action from the foreign office and an appropriate
reply to the foreign office action as if the foreign office action was
made in the application filed at the USPTO) after the aggregate average
period to issue a first Office action on the merits. For example, if
the aggregate average time to issue a first Office action is 20 months
and applicant submits the required documents 30 months after the filing
of the application, then the proposed PTA reduction would be 10 months
beginning on the expiration of the 20-month period and ending on the
date of the filing of the required documents. Thus, delays by foreign
offices beyond the aggregate average time for the USPTO to issue a
first Office action on the merits would be an offsetting reduction
against any positive PTA accrued by the delay in issuing a first Office
action while the USPTO awaits the preparation of a search report and
first action by the office of first filing.
In Tracks I and II, if the U.S. application claims the benefit of a
prior-filed foreign application, and the relied-upon foreign
application is abandoned prior to an action on the merits being made
available, applicant must notify the USPTO and request that the
application be treated for examination queuing purposes as if the
foreign priority claim had not been made. The USPTO is considering
making the failure to notify the USPTO within three months of the
abandonment in the foreign office trigger a PTA offset as the
[[Page 31767]]
USPTO would not appreciate the need to treat the application as if
first-filed in the USPTO until such notice is given. Similarly, if the
office of first filing has a practice of not producing actions on the
merits, applicant would need to notify the USPTO that the application
should be treated for examination queuing purposes as if the foreign
priority claim had not been made.
The USPTO is also considering negotiating with one or more
intellectual property granting offices (IPGOs) to provide an optional
service for applicants at the USPTO to request that the USPTO obtain
from one or more IPGOs a supplemental search report. This supplemental
search report will be considered in preparation of the first Office
action on the merits by the examiner. An additional search will be
conducted by the examiner at the USPTO. This option would be subject to
the USPTO negotiating appropriate agreements with one or more IPGOs.
The USPTO is also considering providing a short period for applicant to
review and make any appropriate amendments or remarks after the
supplemental search is transmitted prior to preparing the first action.
Comments on one or more of the following questions would be
helpful:
1. Should the USPTO proceed with any efforts to enhance applicant
control of the timing of examination?
2. Are the three tracks above the most important tracks for
innovators?
3. Taking into account possible efficiency concerns associated with
providing too many examination tracks, should more than three tracks be
provided?
4. Do you support the USPTO creating a single queue for examination
of all applications accelerated or prioritized (e.g., any application
granted special status or any prioritized application under this
proposal)? This would place applications made special under the
``green'' technology initiative, the accelerated examination procedure
and this proposal in a single queue. For this question assume that a
harmonized track would permit the USPTO to provide more refined and up-
to-date statistics on performance within this track. This would allow
users to have a good estimate on when an application would be examined
if the applicant requested prioritized examination.
5. Should an applicant who requested prioritized examination of an
application prior to filing of a request for continued examination
(RCE) be required to request prioritized examination and pay the
required fee again on filing of an RCE? For this question assume that
the fee for prioritized examination would need to be increased above
the current RCE fee to make sure that sufficient resources are
available to avoid pendency increases of the non-prioritized
applications.
6. Should prioritized examination be available at any time during
examination or appeal to the Board of Patent Appeals and Interferences
(BPAI)?
7. Should the number of claims permitted in a prioritized
application be limited? What should the limit be?
8. Should other requirements for use of the prioritized track be
considered, such as limiting the use of extensions of time?
9. Should prioritized applications be published as patent
application publications shortly after the request for prioritization
is granted? How often would this option be chosen?
10. Should the USPTO provide an applicant-controlled up to 30-month
queue prior to docketing for examination as an option for non-
continuing applications? How often would this option be chosen?
11. Should eighteen-month patent application publication be
required for any application in which the 30-month queue is requested?
12. Should the patent term adjustment (PTA) offset applied to
applicant-requested delay be limited to the delay beyond the aggregate
USPTO pendency to a first Office action on the merits?
13. Should the USPTO suspend prosecution of non-continuing, non-
USPTO first-filed applications to await submission of the search report
and first action on the merits by the foreign office and reply in USPTO
format?
14. Should the PTA accrued during a suspension of prosecution to
await the foreign action and reply be offset? If so, should that offset
be linked to the period beyond average current backlogs to first Office
action on the merits in the traditional queue?
15. Should a reply to the office of first filing office action,
filed in the counterpart application filed at the USPTO as if it were a
reply to a USPTO Office action, be required prior to USPTO examination
of the counterpart application?
16. Should the requirement to delay USPTO examination pending the
provision of a copy of the search report, first action from the office
of first filing and an appropriate reply to the office of first filing
office action be limited to where the office of first filing has
qualified as an International Searching Authority?
17. Should the requirement to provide a copy of the search report,
first action from the office of first filing and an appropriate reply
to the office of first filing office action in the USPTO application be
limited to where the USPTO application will be published as a patent
application publication?
18. Should there be a concern that many applicants that currently
file first in another office would file first at the USPTO to avoid the
delay and requirements proposed by this notice? How often would this
occur?
19. How often do applicants abandon foreign filed applications
prior to an action on the merits in the foreign filed application when
the foreign filed application is relied upon for foreign priority in a
U.S. application? Would applicants expect to increase that number, if
the three track proposal is adopted?
20. Should the national stage of an international application that
designated more than the United States be treated as a USPTO first-
filed application or a non-USPTO first-filed application, or should it
be treated as a continuing application?
21. Should the USPTO offer supplemental searches by IPGOs as an
optional service?
22. Should the USPTO facilitate the supplemental search system by
receiving the request for supplemental search and fee and transmitting
the application and fee to the IPGO? Should the USPTO merely provide
criteria for the applicant to seek supplemental searches directly from
the IPGO?
23. Would supplemental searches be more likely to be requested in
certain technologies? If so, which ones and how often?
24. Which IPGO should be expected to be in high demand for
providing the service, and by how much? Does this depend on technology?
25. Is there a range of fees that would be appropriate to charge
for supplemental searches?
26. What level of quality should be expected? Should the USPTO
enter into agreements that would require quality assurances of the work
performed by the other IPGO?
27. Should the search be required to be conducted based on the U.S.
prior art standards?
28. Should the scope of the search be recorded and transmitted?
29. What language should the search report be transmitted in?
30. Should the search report be required in a short period after
filing, e.g., within six months of filing?
31. How best should access to the application be provided to the
IPGO?
[[Page 31768]]
32. How should any inequitable conduct issues be minimized in
providing this service?
33. Should the USPTO provide a time period for applicants to review
and make any appropriate comments or amendments to their application
after the supplemental search has been transmitted before preparing the
first Office action on the merits?
Registration Information: The USPTO plans to make the meeting
available via Web cast. Web cast information will be available on the
USPTO's Internet Web site before the meeting. The written comments and
list of the meeting participants and their associations will be posted
on the USPTO's Internet Web site (http://www.uspto.gov).
When registering, please provide the following information: (1)
Your name, title, and, if applicable, company or organization, address,
phone number, and e-mail address; and (2) if you wish to make a
presentation, the specific topic or issue to be addressed and the
approximate desired length of your presentation.
There is no fee to register for the public meeting and registration
will be on a first-come, first-serve basis. Early registration is
recommended because seating is limited. Registration on the day of the
public meeting will be permitted on a space-available basis beginning
at 1:30 p.m. Eastern Standard Time, on July 20, 2010.
The USPTO will attempt to accommodate all persons who wish to make
a presentation at the meeting. After reviewing the list of speakers,
the USPTO will contact each speaker prior to the meeting with the
amount of time available and the approximate time that the speaker's
presentation is scheduled to begin. Speakers must then send the final
electronic copies of their presentations in Microsoft PowerPoint or
Microsoft Word to [email protected] by July 16, 2010, so that
the presentation can be displayed in the Auditorium.
If you need special accommodations due to a disability, please
inform the contact person (see FOR FURTHER INFORMATION CONTACT) by July
16, 2010.
Dated: May 25, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-13244 Filed 6-1-10; 8:45 am]
BILLING CODE 3510-16-P