[Federal Register Volume 77, Number 26 (Wednesday, February 8, 2012)]
[Notices]
[Pages 6544-6548]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-3040]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-C-2011-0041]
Humanitarian Awards Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: Following on last year's Request for Comments, the United
States Patent and Trademark Office (USPTO) is launching a twelve-month
pilot program to incentivize the distribution of patented technologies
to address humanitarian needs. The pilot program will be run as an
awards competition. Participating patent applicants, patent owners, and
licensees will submit program applications describing what actions they
have taken with their patented technology to address humanitarian needs
among an impoverished population or further research by others on
humanitarian technologies. Applications will be considered in four
categories: Medical Technology, Food & Nutrition, Clean Technology, and
Information Technology. Independent judges will review the program
applications, and a selection committee will recommend awardees based
on these reviews. Awardees will receive a certificate redeemable to
accelerate select matters before the USPTO and public recognition for
their efforts, including an award ceremony at the USPTO. The
certificate can be redeemed to accelerate one of the following matters:
an ex parte reexamination proceeding, including one appeal to the Board
of Patent Appeals and Interferences (BPAI) from that proceeding; a
patent application, including one appeal to the BPAI from that
application; or an appeal to the BPAI of a claim twice rejected in a
patent application or reissue application or finally rejected in an ex
parte reexamination, without accelerating the underlying matter which
generated the appeal. Inter partes reexaminations and interference
proceedings are not eligible for acceleration, nor are the forthcoming
post grant reviews, inter partes reviews, derivation proceedings, or
supplemental examinations. Certificates awarded in the pilot are not
transferable to other parties.
DATES: Applications will be accepted from March 1, 2012, through August
31, 2012.
FOR FURTHER INFORMATION CONTACT: For questions about competition
procedures, contact the Office of Policy and External Affairs, by
telephone at (571) 272-9300; or by facsimile transmission to (571) 273-
0123; or by mail addressed to: Humanitarian Program, Office of Policy
and External Affairs, United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450.
For questions about certificates, acceleration, or other matters,
contact Pinchus Laufer, Office of Patent Legal Administration, by
telephone at (571) 272-7726; or by facsimile transmission to (571) 273-
7726; or by mail addressed to: Pinchus Laufer, Office of Patent Legal
Administration, United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: In September 2010, the USPTO requested
comments from the public on proposals to incentivize the development
and distribution of technologies that address humanitarian needs. See
Request for Comments on Incentivizing Humanitarian Technologies and
Licensing Through the Intellectual Property System, 75 FR 57261
(September 20, 2010), 1359 Off. Gaz. Pat. Office 121 (October 12,
2010). Based on feedback received, the USPTO is piloting an award
competition recognizing humanitarian uses of patented and patent-
pending technology. The results of this pilot will be reviewed to
determine whether to extend the program.
Application Process
To enter the competition, applicants will submit program
applications describing how their actions satisfy the competition
criteria given below. Program applications are not patent applications
but separate documents created for this pilot program. The term
``application'' throughout this notice shall mean program application
rather than patent application unless otherwise noted. Likewise,
``applicant'' shall mean program applicant rather than patent applicant
unless otherwise noted.
Program applications will be accepted for a period of six months
beginning March 1, 2012. Up to 1,000 applications will be accepted
under this pilot--if that limit is reached before August 31, 2012, the
application period will be closed. Applications must be submitted on-
line using the Web site at http://patentsforhumanity.challenge.gov.
Submissions will be available on the public Web site after being
screened for inappropriate material. Submissions containing
inappropriate material will not be considered.
To ensure consistent and timely evaluation, applications will
consist of a core section and supplements. Application forms will be
available on the Web site. The core section will address how the
applicant meets the defined competition criteria within a strict five-
page limit. Applications exceeding this limit may be removed from
consideration. Applicants may supplement the core section with any
supporting material they wish to provide, such as third party
statements on the merits of their application. Judges will review the
core section of every eligible application they receive. Judges may
review any, all, or none of each application's supplementary material
at their discretion.
After the application submission period ends, judges will review
the applications and a selection committee composed of representatives
from other Federal agencies and laboratories will compose a list of up
to 50 recommended recipients based on the judges' reviews. The
selection committee will send the recommendation list to the USPTO,
with the goal of completing the recommendation process within 90 days
of the close of the application period. The committee will endeavor to
recommend a minimum of five awardees in each of the four categories
(Medical Technology, Food & Nutrition, Clean Technology, and
Information Technology), with additional awardees recommended from any
category at the selection committee's discretion. The
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USPTO will notify the awardees and schedule a public awards ceremony.
The actual number of awards given may vary depending on how many
applications the judges recognize as deserving and how many awardees
the selection committee recommends based on the competition criteria.
All awards are subject to the approval of the Director of the USPTO.
This program involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collections of information involved in this program have been reviewed
and approved by OMB under 5 CFR 1320.13.
Judging Process
Applications will be reviewed by judges external to the USPTO. The
qualifications for judges are described below. Each judge will review a
set of applications based on the judging criteria and selection factors
below, and then submit their reviews for the selection committee to
consider.
Each application will be reviewed by three judges. To ensure fair,
open, and impartial evaluations by the judges, judges will perform
their reviews independently and the reviews will not be released to the
public. After awards have been made, applicants may receive a copy of
the reviews for their program application with the judges' names
redacted by request to the USPTO. Reviews will only be sent to the
address on file with the application.
The selection committee will recommend a list of up to 50 awardees
based on the judges' reviews. For each recommended recipient on the
list, the committee will provide an explanation of the reasons for
recommendation. The final list will be sent to the USPTO with a time
goal of 90 days from the application period closing. The USPTO will
notify the winners and schedule a public awards ceremony.
All recommendations by the judges and selection committee are
subject to the approval of the Director of the USPTO. Outcomes may not
be challenged for relief before the USPTO.
Eligibility
The competition is open to any patent owners or patent licensees,
including inventors who have not assigned their ownership rights to
others, assignees, and exclusive or non-exclusive licensees. Each
program application must involve technology that is the subject of one
or more claims in an issued U.S. utility patent or a pending U.S.
utility patent application owned or licensed by the applicant. If using
a patent application as the basis for the program application,
applicants must show that a Notice of Allowance for one or more claims
from that patent application has been issued before any certificate
will be awarded. Inventions from any field of technology applied to one
of the four competition categories may participate.
Applicants may team together to submit a single joint application
covering the actions of multiple parties. Each applicant in a joint
application must meet the eligibility criteria above. Only one
certificate will be issued to a team of joint applicants selected for
an award, and an award certificate can be redeemed only in one matter
(e.g., a single appeal to the BPAI or a single reexamination
proceeding). Joint applications must designate a single applicant
entity as the recipient for any acceleration certificate awarded on
their application. This designation may be changed at any time before a
certificate is issued by written consent of all parties to the
application.
Licensees and patent owners may team together to submit a joint
program application where both parties contributed to the humanitarian
endeavor. Alternatively, licensees may apply on their own based on
actions they have performed. For applications which do not list a
patent owner as a joint applicant, licensees must notify the patent
owners and provide them a copy of the application at least 14 days
before submitting it. Patent owners may submit a two-page written
statement regarding such an application with any additional information
they wish the judges to consider, which will be appended to the core
section of the application. The lack of such a statement will not
prejudice an application.
There is no preset limit on the number of awards that can be given
per technology or per program applicant. Applicants can determine how
many program applications to submit and which actions and technologies
to cover in each application. However, the diversity requirement may
discourage granting multiple awards to the same technology or applicant
in a single award cycle. See Selection Factors, below, for more
information.
Competition Criteria
Program applications must demonstrate how the applicants' actions
have increased the use of patented technology to address humanitarian
issues. For this competition, a humanitarian issue is one significantly
affecting the public health or quality of life of an impoverished
population. Whether an issue qualifies as humanitarian under this
definition will be determined largely by the judges and selection
committee.
Applications will be assigned to one of four categories: Medical
Technology, Food & Nutrition, Clean Technology, and Information
Technology. The Medical Technology category encompasses any medical
technology, including medicines and vaccines, diagnostic equipment, or
assistive devices. Food & Nutrition includes not only agricultural
technology like drought-resistant crops, more nutritious crop strains,
and farming equipment, but also technologies which improve food
storage, preservation, or preparation. Clean Technology applies to
technologies that improve public health by removing or reducing harmful
contaminants in the environment, such as water filters, sterilization
devices, and cleaner sources of energy for light, heat, cooking, or
other basic needs. Information Technology encompasses both physical
devices and software which markedly improve the lives of the poor, such
as portable computers, cell phones, or Internet access devices being
used to foster literacy, education, or other knowledge which improves
living standards.
Applicants will designate the category in which they wish their
application to be considered. The Office may reassign applications to
another category at their discretion. For evaluation purposes,
applications in each category will be compared to other applications in
that same category.
Within the selected category, each application must address one set
of judging criteria: either (1) humanitarian use, or (2) humanitarian
research. The humanitarian use criteria recognize applying eligible
technologies to positively impact a humanitarian issue. Examples of
technologies with potential humanitarian uses include treatments for
disease, medical diagnostics, water purification, more nutritious or
higher-yield crops, pollution reduction, and education or literacy
devices, among others. The focus is on demonstrated real-world
improvements in the lives of the poor. Applicants must demonstrate:
(i) Subject Matter--the applicants' technology, which is claimed in
a U.S. utility patent in force at the time or a pending U.S. utility
patent application, effectively addresses a recognized humanitarian
issue;
(ii) Target Population--the actions described in the program
application target an impoverished population affected by the
humanitarian issue; and
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(iii) Demonstrated Impact--the applicants' actions have
significantly increased application of the technology that benefits the
impoverished population by addressing the humanitarian issue.
Alternatively, the humanitarian research criteria recognize making
patented technologies available to others for conducting research on a
humanitarian issue. Examples of technologies with potential
humanitarian research benefits include patented molecules, drug
discovery tools, gene sequencing or splicing devices, special-purpose
seed strains, or other patented research material. The focus is on
contributing needed tools to areas of humanitarian research lacking
commercial application. Applicants under this criteria must
demonstrate:
(i) Research Impact--the applicants' technology, that is claimed in
a U.S. utility patent in force at the time or a pending U.S. utility
patent application, has made a significant contribution to substantial
research conducted by others which clearly targets a humanitarian
issue;
(ii) Neglected Field--the research by others occurs in an area
lacking significant commercial application; and
(iii) Contribution--the applicants took significant action to make
the technology available to the other researchers.
Selection Factors
In addition to the competition criteria, a number of selection
factors will be considered in choosing recipients. Unlike judging
criteria, selection factors are not items that applicants address in
their applications. Rather, they are guiding principles for
administering the competition.
Three neutrality principles apply. The program will be technology
neutral, meaning applications may be drawn to any field of technology
with patentable subject matter applied to one of the four competition
categories. It will be geographically neutral, meaning the impoverished
population benefiting from the humanitarian activities can be situated
anywhere in the world. Finally, evaluations will be financially
neutral, meaning the underlying financial model for the applicant's
actions (for-profit or otherwise) is not considered. The focus is only
on the ultimate humanitarian outcome.
Diversity of awarded technologies will also factor into selections.
Part of the program's mission is to showcase the numerous ways in which
the patent community contributes to humanitarian efforts. Just as no
single technology addresses every humanitarian issue, neither does any
one contribution model work in every situation. Selected awardees
should therefore encompass a plethora of technologies, types and sizes
of entities, and models of contributions.
Selection of Judges
Judges will serve as unpaid volunteers. Judges will be selected by
the USPTO with the following considerations in mind:
(1) Recognized subject matter expertise in science, engineering,
economics, business, public policy, health, law, or a related field.
(2) Demonstrated understanding of a broad range of mechanisms for
developing and commercializing technology.
(3) Experience participating in review processes such as grant
applications or academic journal submissions.
(4) Knowledge of humanitarian issues, especially the practical
challenges presented with delivering goods and services to areas with
inadequate transportation, electricity, security, government, or other
infrastructure.
Additionally, judges will be chosen to minimize conflicts of
interest. A conflict of interest occurs when a judge (a) has
significant personal or financial interests in, or is an employee,
officer, director, or agent of, any entity participating in the
competition, or
(b) has a significant familial or financial relationship with an
individual who is participating. If a conflict of interest does arise,
the judge must disclose the relationship to the USPTO and recuse
himself or herself from evaluating the affected applications.
Where possible, judges will be assigned applications in categories
that fit their relevant expertise.
Awards
Winners will receive recognition for their humanitarian efforts at
a public awards ceremony with the Director of the USPTO. They will also
receive an acceleration certificate which can be redeemed to accelerate
one of the following matters: an ex parte reexamination proceeding,
including one appeal to the BPAI from that proceeding; a patent
application, including one appeal to the BPAI from that application; or
an appeal to the BPAI of a claim twice rejected in a patent application
or reissue application or finally rejected in an ex parte
reexamination. Certificates awarded in the pilot are not transferable
to other parties. When redeemed for a patent application or an ex parte
reexamination, only the first appeal to the BPAI arising from that
matter will be accelerated. Alternatively, the certificate may be used
to accelerate an appeal to the BPAI of a final rejection in a patent
application or reissue application without accelerating the underlying
matter which generated the appeal. Inter partes reexaminations and
interference proceedings are not eligible for acceleration, nor are the
forthcoming post grant reviews, inter partes reviews, derivation
proceedings, or supplemental examinations.
Each certificate may be redeemed only once and only on one matter.
Certificates must be redeemed within 12 months of their date of
issuance. Certificates not redeemed within 12 months of issuance expire
and may not be redeemed. Holders of expiring certificates may petition
that the USPTO extend the redemption period of their certificate for an
additional 12 months. This petition incurs no fee. Petitioners should
explain why the additional time is needed, such as not having a
suitable matter or expecting a pending matter which is not yet ripe for
certificate redemption. The decision whether to extend the redemption
period of a certificate rests solely within the Director's discretion
and cannot be challenged before the USPTO. Once a certificate has been
redeemed, it is no longer eligible for extension.
Certificates may be redeemed only in matters where the certificate
holder has an ownership interest in the U.S. patent or patent
application at issue. This includes patents and patent applications
contractually obligated for assignment to the certificate holder. The
certificate may be applied to any such patent or patent application
owned by the certificate holder, not just those which are the subject
of a humanitarian program application.
For purposes of certificate redemption, in addition to the normal
ownership rules, an entity with a controlling interest in the
certificate holder is considered the same as the certificate holder.
Likewise, an entity with a controlling interest in the owner of a
patent or patent application to be accelerated is considered to have an
ownership interest in the matter. For example, the parent of a wholly
owned subsidiary may redeem the subsidiary's certificate to accelerate
a reexamination of the parent's patent.
Certificate holders may not redeem a certificate to accelerate the
matter of another patent owner or patent applicant.
Certificate Redemption Process
When redeeming a humanitarian certificate, the certificate holder
must notify the USPTO with the certificate
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number, the relevant application serial number or ex parte
reexamination control number, and any other pertinent information, such
as the appeal number if assigned. The USPTO will determine whether the
certificate may be redeemed by checking that the certificate is valid,
that the redeeming party is the certificate holder or its agent, that
the matter is eligible for certificate acceleration, that the
certificate holder has an ownership interest in the patent or patent
application in the matter to be accelerated, and that the Office has
sufficient resources to accelerate the matter without unduly impacting
others. The USPTO will promptly notify the certificate holder whether
the redemption is accepted. If the redemption fails for lack of
ownership interest or insufficient Office resources, the certificate
holder retains the certificate and may redeem it in another matter
subject to the same constraints.
Under this pilot, there will be a limit of 15 certificate
redemptions per fiscal year to accelerate ex parte reexaminations. This
limit is due to the smaller overall number of reexamination proceedings
handled by the Office compared to patent applications and appeals. Only
the first 15 accepted redemption requests for an ex parte reexamination
in a given fiscal year will receive accelerated processing. Any number
of certificates up to the number issued may be redeemed to accelerate
patent applications or appeals to the BPAI without accelerating the
underlying matter which generated the appeal (including appeals from ex
parte reexaminations).
Certificates redeemed for accelerated appeals to the BPAI will
receive the following treatment. Accelerated appeals will be taken out
of turn for assignment to a panel. Other processing in the matter will
proceed normally. The Office's goal in accelerated cases already
docketed to the Board, i.e., having an appeal number, is to proceed
from voucher redemption to decision in under 6 months if no oral
arguments are heard in the case, or within 3 months of the date of an
oral argument. For vouchers redeemed in appeals not already docketed at
the Board, the goal is to reach decision in under 6 months from the
date of the appeal number assignment if no oral arguments are heard in
the case, or within 3 months of the date of an oral argument. For the
fourth quarter of 2011, the average pendency from appeal number
assignment to decision was 17 months, out of an overall pendency from
Notice of Appeal to decision of 33 months. However, these numbers are
expected to rise in coming quarters as there has been a sharp increase
in appeal requests in recent months. Pendency also varies significantly
by technology area.
Certificates redeemed in ex parte reexamination proceedings will
receive the following treatment. If redeemed with a request for
reexamination, the request will be decided with a goal of 2 months
rather than the 3 months provided by statute. Certificate redemption at
the filing of a reexamination request will be treated as a waiver by
the patent owner of the right to make a Patent Owner Statement under 37
CFR 1.530 after grant of proceeding. If the statement is waived and the
request granted, a first Office action on the merits will accompany the
order granting reexamination. If the reexamination request is denied,
the certificate is not considered redeemed and may be applied to
another matter. Patent owners may preserve the right to file a Patent
Owner Statement by redeeming the certificate during the statutory
window for filing the Patent Owner's Statement after the reexamination
proceeding has been granted. Subsequent Office actions in accelerated
reexaminations will be taken out of turn as the next item to be worked
on from the reexamination specialist's docket. Petitions filed in the
matter will be decided in time consistent with the accelerated
proceeding. An appeal to the BPAI of a final rejection in an
accelerated reexamination will be taken out of turn for assignment to a
Board panel. Any resulting Notice of Intent to Issue Ex Parte
Reexamination Certificate (NIRC) will receive expedited processing to
the extent possible. Accelerated ex parte reexaminations will not
normally be merged with other co-pending proceedings, including ex
parte reexaminations, inter partes reexaminations, and reissue
proceedings. Where required by statute, an accelerated matter may be
terminated by a decision issued in a post grant review or inter partes
review proceeding.
The USPTO's goal in accelerated reexaminations will be under 6
months of processing time by the USPTO from the certificate redemption
to final disposition, excluding time taken by the applicant for
responses and any time on appeal. For the quarter ending December 31,
2011, the average pendency from filing a request for ex parte
reexamination to an NIRC was 18.7 months, including applicant time.
Humanitarian certificates redeemed to accelerate examination of a
patent application will receive the following treatment. Patent
applicants must present their certificate to receive prioritized
examination. If any appeal to the BPAI arises from the examination
accelerated with this certificate, the first appeal will also be
accelerated according to the procedures for accelerated appeals to the
BPAI described herein. The Office's goal in examinations accelerated by
certificate will be a final disposition within 12 months of accelerated
status being granted, not including the time for any appeals to the
BPAI.
Acceleration Requirements
In order to receive acceleration, the patent owner or patent
applicant must agree to the following conditions. Accelerated patent
applications may contain no more than four independent claims and 30
total claims. A humanitarian certificate can be redeemed in a patent or
reissue application appeal to the BPAI at any time after a docketing
notice has issued and before the matter is assigned to a panel. A
certificate can only be redeemed for reexamination acceleration at the
following points: with the request for reexamination; during the period
for patent owner comment after grant of proceeding; or when a final
rejection is appealed to the BPAI. Certificates will not be accepted
for reexamination proceedings at other times. No more than three new
independent claims and twenty total new claims may be added during an
accelerated reexamination. New claims are those beyond the number
contained in the patent at the time of the reexamination request.
Claims may be added without triggering this limit by canceling an equal
number of existing claims. All submissions in accelerated examinations
must be filed electronically. Petitions filed in the matter must be
filed in good faith. Revival and Request for Continued Reexamination
petitions may not be filed. Failure by the applicant to abide by these
conditions may result in the acceleration being revoked without return
of the certificate and the matter reverting to normal processing.
Acceleration Recommendations
To receive the greatest benefit from acceleration in an ex parte
reexamination proceeding, the applicant is requested to do the
following. The Patent Owner's Statement will be considered to be waived
when a certificate is filed with a request for reexamination. If the
patent owner desires to reserve the right to make a statement, however,
the certificate should be filed instead during the statutory window for
filing the Patent Owner's Statement after the
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reexamination proceeding has been granted. Acceleration will proceed
from that point forward. All submissions in the accelerated matter
should be filed electronically, except in accelerated examinations
where submissions must be filed electronically. Conducting more than
one examiner interview during prosecution should be avoided. Responses
to all Office actions should be submitted within one month of receiving
the Office action. Petitions should be avoided as much as possible.
Failure to meet these conditions may result in longer processing times
by the USPTO than the goals given above, but the matter will continue
to receive accelerated processing as described herein to the extent
possible.
In all instances, certificate redemption is subject to available
USPTO resources at the Director's discretion. If accelerating the
matter would negatively impact other applicants, the USPTO may decline
to redeem the certificate at that time.
Dated: February 6, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-3040 Filed 2-7-12; 8:45 am]
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