[Federal Register Volume 80, Number 244 (Monday, December 21, 2015)]
[Proposed Rules]
[Pages 79277-79279]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-31897]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2015-0074]
Request for Submission of Topics for USPTO Quality Case Studies
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Initiation of Pilot Program and Request for Program Topics.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
initiating a new pilot program as part of its Enhanced Patent Quality
Initiative. Currently, the USPTO performs reviews of applications on
target issues for internal quality purposes, referred to as ``case
studies.'' The USPTO now seeks to leverage the experience of its
stakeholders to expand the use of case studies to additional quality-
related topics. Beginning immediately, stakeholders are invited to
submit patent quality-related topics that they believe should be the
subject of a case study. After considering the submitted topics, the
USPTO will identify which topics will be the subject of upcoming case
studies. The USPTO anticipates that the results of these case studies
will help it to understand better the quality of its work products and,
where appropriate, to take action to remediate quality issues or to
formulate best practices to further enhance quality. Such public
engagement is sought not only to broaden the scope of quality issues
currently studied by the USPTO, but also to continue stakeholder
involvement in the quality review process and to maintain a transparent
quality enhancement process.
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DATES: Submissions deadline date: To be ensured of consideration,
written topic submissions must be received on or before February 12,
2016.
ADDRESSES: Written submissions should be sent by electronic mail
message over the Internet addressed to:
[email protected]. Submissions may also be
submitted by postal mail addressed to: Mail Stop Comments Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-
1450, marked to the attention of Michael Cygan, Senior Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy. Although submissions may be
sent by postal mail, the USPTO prefers to receive submissions by
electronic mail message over the Internet because sharing submissions
with the public is more easily accomplished.
Electronic submissions are preferred to be formatted in plain text,
but also may be submitted in ADOBE[supreg] portable document format or
MICROSOFT WORD[supreg] format. Submissions not sent electronically
should be on paper in a format that facilitates convenient digital
scanning into ADOBE[supreg] portable document format.
Timely filed submissions will be available for public inspection at
the Office of the Commissioner for Patents, currently located in
Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia
22314. Submissions also will be available for viewing via the USPTO's
Internet Web site (http://www.uspto.gov/patents/init_events/Patent-Quality-Initiative.jsp). Because submissions will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be
included. It would be helpful to the USPTO if written submissions
included information about: (1) The name and affiliation of the
individual responding; and (2) an indication of whether submissions
offered represent views of the respondent's organization or are the
respondent's personal views.
FOR FURTHER INFORMATION CONTACT: Michael T. Cygan, Senior Legal
Advisor, at (571) 272-7700; Maria Nuzzolillo, Legal Advisor, at (571)
272-8150; or Jeffrey R. West, Legal Advisor, at (571) 272-2226.
SUPPLEMENTARY INFORMATION:
I. The Enhanced Quality Initiative
On February 5, 2015, the United States Patent and Trademark Office
(USPTO) launched an enhanced quality initiative to improve the quality
of patents issued by the USPTO. This initiative began with a request
for public comments on a set of six proposals outlined in a document in
the Federal Register, Request for Comments on Enhancing Patent Quality,
80 FR 6475 (Feb. 5, 2015). The USPTO also held a two-day ``Quality
Summit'' on March 25 and 26, 2015, at the USPTO headquarters in
Alexandria, Virginia, to discuss the quality concerns of patent
stakeholders and to receive feedback on the USPTO's proposals.
Following the Quality Summit, the USPTO has continued its engagement
with the public through numerous roadshows, events, and stakeholder
meetings to further refine the steps that may be taken to improve
quality.
The enhanced patent quality initiative targets three pillars of
patent quality: (1) Excellence in work products; (2) excellence in
measuring patent quality; and (3) excellence in customer service. As
part of the first pillar, the USPTO is focusing on the quality of the
work products provided at every stage of the patent process, including
the actions taken by the USPTO during application processing,
examination, and issuance processes, as well as the quality of issued
patents. The USPTO originally proposed creating a mechanism by which
the public could flag particular applications to the Office of Patent
Quality Assurance (OPQA) for review. After considering the comments
from both our internal and external stakeholders, the USPTO decided to
revise its original proposal. The USPTO is, instead, implementing a
pilot program in which stakeholders are invited to submit patent
quality-related topics, not particular applications, they believe
should be the subject of a case study.
II. Case Studies at the USPTO
The USPTO performs case studies to investigate specific quality-
related issues in addition to reviews of individual examiner work
products, such as its review of a sampling of first Office actions on
the merits. The USPTO designs, and performs, these case studies to
investigate whether the quality-related issues that are the subject of
these studies exist. If the result of a case study reveals that action
is needed, the USPTO takes the necessary action. For example, if the
result of the case study reveals that additional training is needed,
the USPTO develops and implements the training. Unlike the USPTO's
review of specific Office actions in an individual application, case
studies allow the USPTO to investigate how a particular issue is being
treated or addressed across hundreds or thousands of applications. The
USPTO historically has performed case studies for internal quality
purposes.
III. Topic Submission for Case Studies Pilot Program
This new pilot program invites the public to submit topics for case
studies. Submissions may concern any topic affecting the USPTO's
ability to effectively issue high-quality patents. A submission should
be more than a mere statement of an issue or problem encountered by the
submitter. A submission should propose a specific correlation or trend
for study, and where possible, suggest a methodology for its
investigation. A helpful submission would also explain how the results
of that case study could be used to improve patent quality. The
submission may refer to concrete examples to support the proposed
correlation or trend, but any such examples should not contain
information sufficient to identify any particular application, any
particular examiner, or any particular art unit. A submission may
specify certain data subsets for analysis, e.g., primary vs. junior
examiners, or data broken out for each Technology Center. Finally, the
submission should identify any relevant dates of concern that pertain
to the issue presented, e.g., dates of a particular court opinion or
USPTO guidance document.
The following restrictions are placed on submissions. First, each
separate topic must be presented in a separate submission to ensure
consideration, although there is no limit placed upon the number of
submissions from a person or entity. Second, each submission should be
titled, such as in an email's ``subject'' line, to reflect the topic
contained therein. Third, submissions should not contain information
associated with any particular patent application or patent, any
particular examiner, or any particular art unit; any such submission
will not be part of the study. Fourth, topics should focus on patent
quality issues; topics relating to other issues such as management
concerns or statutory changes are outside the scope of these case
studies. Fifth, the submission should concisely explain the nature and
purpose of the proposed study to aid the USPTO in selecting the best
topic(s) for this pilot program; the submission should not include
lengthy supporting documentation or arguments.
The USPTO will consider these suggestions and identify potential
areas
[[Page 79279]]
for quality case studies in addition to those already being conducted
by OPQA. The USPTO will use the results of the studies to improve its
understanding of the quality of its work products and, where
appropriate, to take action to remediate quality issues or to formulate
best practices to further enhance quality. For example, if a case study
reveals a training issue, the USPTO will develop and deliver the
appropriate training.
This pilot program will help the USPTO determine the usefulness of
this manner of public submission for case study topics as compared to
currently-existing methods, such as public fora and external quality
surveys. In addition, this pilot program will allow the USPTO to
communicate to the public the case studies determined to be useful and
the results of those studies.
IV. Example of a Topic Submission
The following example is provided to assist the public in providing
high-quality submissions that best communicate a focused case study
topic for consideration:
Title: ``Pre-first action interviews and quality of the resulting
patent prosecution.''
Proposal for study: ``Pre-first action interviews result in a
shorter time-to-issuance in such applications that are issued as
patents.''
Explanation: In my experience as a patent practitioner, interviews
with examiners lead to better understanding of the claimed invention by
both parties. In particular, interviews can reveal that the parties are
operating under differing understandings of the scope of the claims,
the meaning of a claim term, or interpretation of a teaching of the
prior art. When performed early in prosecution, these can provide the
opportunity to resolve such differences before the mutual
misunderstanding or miscommunication results in extended prosecution.
This permits more efficient examination as reflected by a shorter
prosecution time for those applications that eventually mature into
patents. These efficiency gains are most noticeable after April 1,
2011, when the Full First Action Interview Pilot Program went into
effect. The USPTO should study what effect an interview before the
first action on the merits in a new application has on time-to-
allowance in applications that are eventually issued as patents, and if
there are any particular features of the interview that strongly
correlate with the time-to-allowance. Discovery of such correlations
could lead to USPTO process changes or changes in applicants' approach
to prosecution that could improve the overall efficiency and
effectiveness of patent prosecution.
Dated: December 15, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2015-31897 Filed 12-18-15; 8:45 am]
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