[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]
BILLING CODE 3510-16-P