[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.

[[Page 79278]]


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]
 BILLING CODE 3510-16-P