[Federal Register Volume 79, Number 64 (Thursday, April 3, 2014)]
[Notices]
[Pages 18670-18674]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-07489]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2014-0018]
Patents for Humanity Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) recently concluded a twelve-month pilot program called Patents
for Humanity to incentivize the use of patented technologies for
humanitarian purposes, culminating with an awards ceremony in April
2013. Following the success of this pilot, the USPTO is continuing
Patents for Humanity as an annual awards competition. The USPTO will
announce an application period each year of the competition. For 2014,
applications will be accepted from April 15 to September 15, 2014.
Participants will submit program applications describing what actions
they have taken with their patented technology to either address
humanitarian needs among an impoverished population or further research
by others on humanitarian technologies. Applications will be accepted
in five categories: (1) Medicine, (2) Nutrition, (3) Sanitation, (4)
Household Energy, and (5) Living Standards. Independent judges will
review the program applications, and Federal employees from other
agencies will recommend awards based on these reviews.
For the 2014 competition, two types of awards will be made: Patents
for Humanity Awards and honorable mentions. The Patents for Humanity
Award is the top award for applicants best representing the Patents for
Humanity principles. Patents for Humanity Award recipients in 2014 will
receive a certificate to accelerate select matters before the USPTO and
public recognition for their efforts, including an award ceremony
sponsored by the USPTO. Honorable mentions in 2014 will receive
accelerated examination of one patent application and a featured
writeup on the USPTO Web site. A portion of honorable mentions may be
awarded for the best up and coming technologies. The USPTO expects to
award roughly ten Patents for Humanity Awards and up to twenty
honorable mentions in 2014. The exact number of awards may vary
depending on the number and quality of program applications received.
Types of awards for subsequent years will be announced with the
application period in the Federal Register.
Patents for Humanity certificates awarded through the 2014
competition can be redeemed to accelerate one of the following matters:
An ex parte reexamination proceeding, including one appeal to the
Patent Trial and Appeal Board (PTAB) from that proceeding; a patent
application, including one appeal to the PTAB from that application; or
an appeal to the PTAB 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 post-grant
reviews, inter partes reviews, covered business method reviews,
derivation proceedings, or supplemental examinations. Certificates
awarded are not transferable to other parties.
DATES: Program applications for 2014 will be accepted from April 15 to
September 15, or until 300 applications are received, whichever comes
first.
FOR FURTHER INFORMATION CONTACT: For questions about the program,
contact Edward Elliott, Office of Policy and International Affairs, by
telephone at 571-272-7024; or by facsimile transmission to 571-273-
0123; or by mail addressed to: Patents for Humanity Program, Attention:
Edward Elliott, Office of Policy and International Affairs, 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). A pilot program was announced in February 2012. See 77 FR 6544
(February 8, 2012).
Application Process
The remainder of this notice describes the terms and conditions of
the annual program and details for 2014. To enter the competition,
applicants must 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 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.
Each year, the USPTO will announce an application period for
submitting Patents for Humanity applications. Applications for 2014
will be accepted from April 15 to September 15, 2014, or until 300
applications are received, whichever occurs first. That is, if that
limit is reached before the application deadline, then the application
period will close. Applications must be submitted electronically to an
on-line application portal by following the instructions posted at
http://www.uspto.gov/patentsforhumanity. Submissions will be publicly
available on the application portal after being screened for
inappropriate material. Submissions containing incomplete or
inappropriate material will not be considered.
For consistent and timely evaluation, applications will consist of
a core section and supplements. Application forms will be available
from the USPTO Web site at http://www.uspto.gov/patentsforhumanity. 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
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provide, such as project brochures, adoption data, case studies,
published articles, or third party testimonials. Judges will review the
core section of every application they evaluate. Judges may review any,
all, or none of each application's supplementary material at their
discretion.
After the application period ends, judges will review and score the
applications. Based on these reviews, USPTO will forward the top-
scoring applications to reviewers from participating Federal agencies
to recommend award recipients. Final decisions on awards are made at
the discretion of the Director of the USPTO. The program's goal is to
complete the recommendation process within 90 days of the close of the
application period.
The USPTO will endeavor to balance the number of awards in each
category to reflect the quality of applications received. The USPTO may
reassign applications to other categories or modify categories as
needed. The actual number of awards given may vary depending on the
number and quality of submissions.
Once awards have been determined, the USPTO will notify the
awardees and schedule a public awards ceremony. The USPTO will attempt
to notify awardees four weeks before the ceremony date if circumstances
permit.
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
collection of information involved in this program has been reviewed
and approved by OMB under 5 CFR 1320.13.
Judging Process
Applications will be reviewed by independent judges chosen from
outside 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 scores and
evaluations to the USPTO.
Each application will be reviewed by multiple judges. To encourage
fair, open, and impartial evaluations, judges will perform their
reviews independently, and the reviews will not be released to the
public as permissible by law. After awards have been made, applicants
may request from the USPTO a copy of the reviews for their application
with the judges' names redacted. Reviews will be sent to either the
address on file with the application or another address verified as
belonging to the applicant.
After judges have submitted their evaluations, the top scoring
applications will be forwarded to reviewers from participating Federal
agencies to make recommendations on awards. The USPTO will request
these recommendations be provided within 90 days of the end of the
application period, if possible. After the recommendations are received
and final recipients chosen, the USPTO will notify winners and schedule
a public awards ceremony.
All awards are subject to the approval of the Director of the
USPTO. Results may not be challenged for relief before the USPTO.
Eligibility
The competition is open to any patent owners, patent applicants, 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. Honorary recognition may be given without
this showing at the Director's discretion. Inventions from any field of
technology applied to one of the competition categories may
participate.
Applicants may team together to submit a single joint application
covering the actions of multiple parties. At least one 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 the certificate can be redeemed only in one matter (e.g.,
a single patent application examination, a single ex parte
reexamination proceeding, etc.). Joint applications must designate a
single applicant as the recipient for any acceleration certificate
awarded on their application, and that recipient must meet the
applicant eligibility criteria described in this notice. The designated
recipient 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 a humanitarian
endeavor. Alternatively, patent owners or licensees may apply on their
own based on actions they have performed without the other party. For
applications which do not list a patent owner as a joint applicant, the
licensee must notify the patent owner and provide them a copy of their
completed application before the close of the application period.
Within 14 days of being notified, patent owners may submit a two-page
written statement regarding such an application with any additional
information they wish the judges to consider. 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
discourages granting multiple awards to the same technology or
applicant. 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. Judges will examine whether the criteria have been met for
a humanitarian issue based on the description in the application.
Applicants will select which category best fits their application,
chosen from the following: (1) Medicine, (2) Nutrition, (3) Sanitation,
(4) Household Energy, and (5) Living Standards. Medicine encompasses
technology for any medical treatment or service, including medicines
and vaccines, diagnostic equipment, medical devices, implants,
assistive devices, epidemiology, and preventive medicine. Nutrition
includes not only agricultural technology like drought-resistant crops,
more nutritious crop strains, and farming equipment, but also
technologies which improve food production, processing, preservation
and storage, or preparation. Sanitation includes not only issues with
clean water and waste treatment, but also other environmental issues
with a demonstrable impact on human health, such as air pollution,
toxic substances, chemical exposure, or land mines. Household Energy
involves providing power to homes and communities for light, heating,
cooking, or other basic needs in areas without reliable electricity.
Living Standards encompasses a wide range of issues that empower people
to escape poverty, such
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as education, literacy, access to information, communications, internet
access, access to markets, and microfinance. Technologies in this
category include portable computers, cell phones, or internet access
devices being used to foster literacy, education, or other life-
changing knowledge.
Applicants will designate the category in which they wish their
application to be considered. The Office may reassign an application to
another category at its discretion. Categories may be altered when
awards are made to better reflect the applications received that year.
Within the selected category, each application must address either
one of two sets of judging criteria: (1) Humanitarian use or (2)
humanitarian research. The humanitarian use criteria recognize those
who apply 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, off-grid solar
lighting, and education or literacy devices, among others. The focus is
on demonstrable real-world improvements in the lives of the poor.
Applicants must show:
(i) Subject Matter--the applicant's 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 applicant's actions target an
impoverished population affected by the humanitarian issue.
(iii) Contribution--the applicant took meaningful actions to make
the technology more available for humanitarian uses. This only includes
actions taken by the applicant.
(iv) Impact--the applicant's contributions have significantly
advanced deployment of the technology to benefit the target population.
This includes downstream actions by third parties building on the
applicant's contributions.
Alternatively, the humanitarian research criteria recognize
increasing the availability of patented technologies to other
researchers for conducting research with a humanitarian purpose.
Examples of technologies with potential to advance humanitarian
research include patented molecules, drug discovery tools, gene
sequencing or splicing devices, special-purpose seed strains, data
analysis software, 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) Subject Matter--the applicant's technology, which is claimed in
a U.S. utility patent in force at the time or a pending U.S. utility
patent application, effectively supports research by others, e.g., as a
tool or input.
(ii) Neglected Field--the research by others clearly targets a
humanitarian issue in an area lacking significant commercial
application.
(iii) Contribution--the applicant took meaningful actions to make
the technology more available for research by others in the neglected
field. This only includes actions taken by the applicant.
(iv) Impact--the research by others has a high potential for
significant impact on the neglected field. This includes downstream
actions by third parties using the applicant's contributions.
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. First, 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 five
competition categories. Second, it will be geographically neutral,
meaning the impoverished population benefiting from the humanitarian
activities can be situated anywhere in the world. Third, 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, no single
contribution model will work in every situation. Selected awardees
should therefore encompass a range of technologies, types and sizes of
entities, and models of contributions.
The decision to award a certificate rests solely within the
Director's discretion and cannot be challenged before the USPTO or any
Federal agency.
Selection of Judges
Judges will be selected by the USPTO each award cycle. Candidates
with the following qualifications will be preferred:
(1) Recognized subject matter expertise in medicine, science,
engineering, economics, business, law, public policy, or a related
field.
(2) Demonstrated understanding of technology commercialization.
(3) Experience with peer 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, e.g., by avoiding candidates employed by, or with clients in,
industries relevant to this program. Candidates from academia are
desired. 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. When a conflict of interest does
arise, the judge must recuse himself or herself from evaluating the
affected applications.
Awards
Winners of the 2014 competition will receive recognition for their
humanitarian efforts at a public awards ceremony with the Director of
the USPTO or other executive branch official. They will also receive an
acceleration certificate which can be redeemed to accelerate select
matters before the USPTO. For the 2014 competition, eligible matters
shall be one of the following: (i) An ex parte reexamination
proceeding, including one appeal to the PTAB from that proceeding; (ii)
a patent application, including one appeal to the PTAB from that
application; or (iii) an appeal to the PTAB of a claim twice rejected
in a patent application or reissue application or finally rejected in
an ex parte reexamination. When redeemed for a patent application or an
ex parte reexamination, only the first appeal to the PTAB arising from
that matter will be accelerated. Alternatively, the certificate may be
used to accelerate an appeal to the PTAB of a final rejection in a
patent application or reissue application without accelerating the
underlying matter which generated the
[[Page 18673]]
appeal. Inter partes reexaminations and interference proceedings are
not eligible for acceleration, nor are post grant reviews, inter partes
reviews, covered business method reviews, derivation proceedings, or
supplemental examinations.
Certificates awarded in the program are not transferable to other
parties.
Honorable mentions will receive a certificate for accelerated
examination of one patent application and a featured writeup on the
USPTO Web site. Honorable mention accelerations will only result in the
acceleration of a patent application examination, and not any
subsequent appeal from that application. A portion of honorable
mentions may be awarded for the best up and coming technologies.
Each certificate may be redeemed only once and only towards one
matter. Certificates must be redeemed within 12 months of their date of
issuance. Certificates not redeemed within 12 months of issuance will
expire and may not be redeemed. Holders of expiring or expired
certificates may petition that the USPTO extend the redemption period
of their certificate for an additional 12 months beyond the original
expiration date. 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 or any Federal agency. Once a
certificate has been redeemed, it is no longer eligible for extension.
The certificate may be applied to an eligible matter for any patent
or patent application in which the certificate holder has an ownership
interest, not just those related to the recipient's Patents for
Humanity submission. Certificate holders may not redeem a certificate
to accelerate the matter of another patent owner or patent applicant.
Types of awards for subsequent years will be announced with the
application period in the Federal Register.
Certificate Redemption Process
When redeeming a humanitarian certificate, the certificate holder
must notify the USPTO with the certificate 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, 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 program, 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 the larger overall number of patent
applications and appeals concurrently handled by the Office. 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 PTAB without accelerating the
underlying matter which generated the appeal (including appeals from ex
parte reexaminations).
Certificates redeemed for accelerated appeals to the PTAB 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 USPTO's goal in accelerated cases already
docketed to the PTAB, i.e., having an appeal number, is to proceed from
certificate redemption to decision in under six months if no oral
arguments are heard in the case, or within three months of the date of
an oral argument. For certificates redeemed in appeals not already
docketed at the PTAB, the goal is to reach decision in under six months
from the date of the appeal number assignment if no oral arguments are
heard in the case, or within three months of the date of an oral
argument. For the first quarter of FY 2014, the average pendency from
appeal number assignment to decision was 27 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 two months
rather than the three 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 PTAB
of a final rejection in an accelerated reexamination will be taken out
of turn for assignment to a PTAB 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 normally not 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 another
USPTO proceeding, such as post grant review.
The USPTO's goal for processing accelerated reexaminations will be
under six months from certificate redemption to final disposition,
excluding time taken by the applicant for responses and any time on
appeal. For the fourth quarter of FY 2013, the average pendency from
filing a request for ex parte reexamination to an NIRC was 21.7 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 accelerated
examination. If any appeal to the PTAB arises from the examination
accelerated with this certificate, the first appeal will also be
accelerated according to the procedures for accelerated appeals to the
PTAB described herein. Accelerations for honorable mentions will follow
the same rules and procedures, except that no appeals will be
accelerated. The
[[Page 18674]]
USPTO'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 PTAB. As of January 2014, the
average pendency for Track One prioritized examinations was 5.1 months
from petition grant to allowance, while the average pendency for all
applications was 28.3 months.
Acceleration Requirements
In order to receive acceleration, the patent owner or patent
applicant must agree to the following conditions. Accelerated patent
applications may not contain at any time more than four independent
claims, more than thirty total claims, or any multiple dependent
claims. A humanitarian certificate can be redeemed in a patent
application appeal or reissue application appeal to the PTAB at any
time after a docketing notice has issued and before the matter is
assigned to a PTAB panel. A certificate can only be redeemed for
reexamination acceleration at the following points: (i) With the
request for reexamination; (ii) during the period for patent owner
comment after grant of proceeding; or (iii) when a final rejection is
appealed to the PTAB. Certificates will not be accepted for
reexamination proceedings at other times. During an accelerated
reexamination, no more than three new independent claims and 20 total
new claims may be added. 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 via EFS-Web. All petitions filed in the
matter must be filed in good faith. Petitions for Revival and Requests
for Continued Reexamination 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 reexamination proceeding
has been granted. Acceleration will proceed from that point forward.
Even where submissions in the accelerated matter are not required
to be filed electronically, those submissions should 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.
Dated: March 31, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and,
Deputy Director of the United States Patent and Trademark Office.
[FR Doc. 2014-07489 Filed 4-2-14; 8:45 am]
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