[Federal Register Volume 81, Number 167 (Monday, August 29, 2016)]
[Notices]
[Pages 59197-59199]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-20703]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2016-0026]


Request for Comments and Notice of Roundtable Event on Leveraging 
Electronic Resources To Retrieve Information From Applicant's Other 
Applications and Streamline Patent Issuance

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of public meeting; request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
continuing its efforts to expedite and improve the overall patent 
process. Accordingly, the USPTO is exploring how to best utilize 
available electronic resources to provide examiners with information 
(e.g., prior art, search reports, etc.) from applicant's other 
applications as early as possible to increase patent examination 
quality and efficiency. These other applications, for example, could 
have the same or substantially the same disclosure (e.g., domestic 
parent and counterpart foreign applications) as the U.S. application 
being examined. In addition to improving patent examination quality and 
efficiency, providing the examiner with this information from 
applicant's other applications will reduce applicant's burden to 
provide this information to the USPTO.
    Further, the USPTO is seeking to reduce the issuance time of a 
patent by eliminating potentially unnecessary information from the 
front page of the patent. In particular, the USPTO is seeking public 
comment on what information, beyond a copy of the specification and 
drawing that is required by statute, should be part of the patent 
considering that complete information concerning U.S. patents and U.S. 
patent application publications are accessible to the public via the 
Patent Application Information Retrieval (PAIR) system.
    To assist the USPTO in determining the best way to address these 
two topics, the USPTO is hosting a roundtable event to obtain public 
input. The roundtable will be open for any member of the public and 
will provide a forum for a discussion of the questions identified in 
this notice. Written comments in response to these questions set forth 
in this Notice also are requested.

DATES: Event Date: The roundtable will be held on September 28, 2016,

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beginning at 1:00 p.m. Eastern Daylight Time (EDT), and ending at 4:00 
p.m. EDT.
    Roundtable Registration Deadline: Registration to attend the 
roundtable in person or via webcast is required by September 21, 2016. 
Additionally, requests to participate in the roundtable as a speaker 
must be submitted in writing no later than September 14, 2016. See the 
``Event Registration Information'' section of this notice for 
additional details on how to register and how to request to present as 
a speaker.
    Written Comments: Written comments must be received on or before 
October 28, 2016.
    Written comments should be sent by electronic mail addressed to 
[email protected]. Comments also may be submitted by postal mail 
addressed to: Mail Stop Comments--Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
Michael Neas, Deputy Director, International Patent Legal 
Administration. Although comments may be submitted by postal mail, the 
USPTO prefers to receive comments by electronic mail.
    Comments will be available for public inspection via the USPTO's 
Internet Web site at http://www.uspto.gov/patent/laws-and-regulations/comments-public-response-specific-requests-uspto, and at the Office of 
the Commissioner for Patents, located in Madison East, Tenth Floor, 600 
Dulany Street, Alexandria, VA 22314, upon request. Because comments 
will be available for public inspection, information that is not 
desired to be made public, such as an address or phone number, should 
not be included in the comments.

ADDRESSES: 
    Event Address: The roundtable will be held in the USPTO 
Headquarters, Madison Auditorium, 600 Dulany Street, Alexandria, VA 
22314.
    Event Registration Information: To register to attend or request to 
present as a speaker, please send an email message to 
[email protected] and provide the following information: (1) 
Your name, title, company or organization (if applicable), address, 
phone number, and email address; (2) whether you wish to attend in 
person or via webcast; and (3) whether you wish to make an oral 
presentation at the roundtable and, if so, which question(s) identified 
in part III of the SUPPLEMENTARY INFORMATION section of this notice 
will be addressed and the approximate desired length of your 
presentation. Each attendee, even if from the same organization, must 
register separately.
    In order to give all speakers a meaningful opportunity to speak, 
the USPTO may not be able to accommodate all persons who wish to make a 
presentation. However, the USPTO will attempt to accommodate as many 
persons as possible who wish to make a presentation. After reviewing 
the speaker requests and the information regarding the presentations 
provided in the requests, the USPTO will contact each speaker prior to 
the event with the amount of time available and the approximate time 
that the speaker's presentation is scheduled to begin. The amount of 
time available for each presentation may be limited to ensure that all 
persons selected to speak will have a meaningful opportunity to do so. 
Speakers who opt to employ slides as part of their presentation must 
send final electronic copies of the slides in Microsoft PowerPoint to 
[email protected] by September 21, 2016, so that the slides can 
be displayed at the roundtable. Additionally, the USPTO will provide an 
opportunity for persons in the audience to speak at the roundtable 
without a formal presentation.
    For more information on the roundtable, including webcast access 
instructions, agenda and a list of speakers, please visit https://www.uspto.gov/patent/initiatives/patent-application-initiatives/roundtable-discuss-leveraging-electronic-resources.
    If special accommodations due to a disability are needed, please 
inform the contact person(s) identified below.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to the attention of Jessica Patterson, Program 
Manager, International Patent Cooperation, by telephone at 571-272-
8828, or by email to [email protected].

SUPPLEMENTARY INFORMATION: 
    I. Purpose of Notice: This notice announces a roundtable event to 
solicit stakeholder input concerning the questions identified in part 
III of this section. In particular, at the roundtable we seek to 
explore how the USPTO can better leverage applicant's other 
applications having the same or substantially the same disclosure 
(e.g., domestic parent and counterpart foreign applications (see MPEP 
609.04(b)(V))) as the U.S. application under examination, to provide 
examiners with relevant information as early as possible. The USPTO 
believes that providing this information at the earliest possible stage 
of prosecution of the U.S. application can improve the examination 
efficiency and quality. The participants at the roundtable also will 
provide feedback on what information, beyond that of a copy of the 
specification and drawing set forth in 35 U.S.C. 154(a)(4), should be 
part of a patent considering that complete information concerning U.S. 
patents and U.S. patent application publications are accessible to the 
public via the PAIR system. The USPTO is also seeking written comments 
on the questions identified in part III of this section. The public is 
invited to provide comments on these questions or any other issues 
relevant to the consideration or development of the two topics 
discussed in this notice. Any member of the public, whether attending 
the roundtable or not, may submit written comments for consideration by 
the USPTO on any of the issues identified in this notice.
    II. Background: The USPTO strives to expedite and improve the 
overall patent application process by (1) increasing patent examination 
quality and efficiency, and (2) streamlining patent issuance after an 
application is allowed.
    (1) Increasing Patent Examination Quality and Efficiency
    Examiners consider information from various sources when making 
patentability determinations. One such source may be an information 
disclosure statement filed by the applicant. Another would be 
information identified by the examiner during his prior art search. For 
continuing applications, the examiner will also consider the 
information the USPTO previously considered during the examination of a 
domestic parent application (other than an international application 
that designated the U.S.). See section 609.02 of the Manual of Patent 
Examining Procedure (9th ed. 2015) (Rev. 07.2015, November 2015) 
(MPEP). The USPTO's work sharing efforts have resulted in the 
development of additional sources of information from foreign 
counterpart applications that is likely highly relevant to the U.S. 
application under examination. For example, Global Dossier, a work 
sharing initiative developed by the IP5 offices (USPTO, the European 
Patent Office (EPO), the Japan Patent Office (JPO), the Korean 
Intellectual Property Office (KIPO), and the State Intellectual 
Property Office of the People's Republic of China (SIPO)), provides 
U.S. examiners and the public access to the official file contents 
(e.g., prior art, search reports, office actions, etc.) of counterpart 
foreign applications.
    The USPTO is exploring how to better leverage the information 
contained in these counterpart foreign applications and other U.S. 
applications with the same or substantially the same

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disclosure to improve examination efficiency and quality. The USPTO 
seeks, for example, the development of a system that utilizes both 
Global Dossier and the USPTO's internal databases to provide examiners 
with the information from counterpart foreign and domestic parent 
applications automatically at the earliest stage in prosecution of a 
U.S. application to improve the quality and efficiency of examination.
    Global Dossier and the USPTO's databases may contain information 
from applicant's other applications that are not a domestic parent 
application or a counterpart foreign application. In fact, the pool of 
applications available for monitoring for relevant information could be 
much larger (e.g., the database may contain information on applicant's 
other child applications or other applications that are indirectly 
related to the U.S. application through a priority claim). Numerous 
concerns, however, arise when determining how to effectively implement 
a system with a larger scope of applications than domestic parent and 
counterpart foreign applications. Similarly, numerous concerns arise 
when considering what information would be provided to an examiner from 
another of applicant's applications. For example, too many 
applications, like too many items of information, might present large 
amounts of information that has no relevance to the application being 
examined. The examiner's consideration of such information may result 
in the examiner not having time to fully consider information that is 
relevant, and possibly material, to the U.S. application under 
examination. The right balance of the scope of applications and 
information therein is critical to ensure examiners are provided with 
the most relevant information without overburdening them with 
immaterial and marginally relevant information.
    As part of its efforts to seek the right balance, the USPTO is 
requesting input on the best way it can ascertain the presence of these 
other applications having the same or substantially the same disclosure 
as the instant U.S. application under examination and import 
potentially relevant information contained therein. For instance, some 
applicants may prefer a fully automated system in which the USPTO 
monitors a set of applications that have been predefined by the USPTO, 
such as domestic parent and counterpart foreign applications, for 
certain information (e.g., prior art) to be imported into the U.S. 
application under examination. Other applicants may not desire that the 
USPTO import information from such a USPTO predefined set of 
applications, but instead, may prefer a set of applications defined by 
the applicant from which information is imported for consideration by 
the examiner. Still, other applicants may want to define both the set 
of applications and the particular information to be imported from 
these applications. In view of the different possible approaches for 
importing information, such as those mentioned herein, the USPTO would 
like stakeholders' input on what approach they believe the USPTO should 
consider implementing so examiners have the most pertinent information 
at the earliest stage of prosecution of the U.S. application. 
Furthermore, if the USPTO were to import information using any 
approach, the USPTO would like stakeholders' input on what 
documentation should be included in the record of the U.S. application 
under examination to accurately reflect that the information was 
imported and considered by the examiner.
    (2) Streamlining patent issuance after an application is allowed
    The USPTO is also considering what information, beyond the 
specification and drawings provided for in 35 U.S.C. 154(a)(4), should 
be part of a patent. This would include studying the degree to which 
the USPTO can migrate from the current paper-based process to 21st 
century processes that make greater use of the reality that complete 
information concerning U.S. patents and U.S. patent application 
publications is accessible to the public via the PAIR system. For 
example, the USPTO discontinued printing inventor address information 
in 2011 as this information is readily accessible via PAIR. See 
Elimination of an Inventor's Mailing Address on Patents and Application 
Publications, 1360 Off. Gaz. Pat. Office 197 (Nov. 23, 2010). The USPTO 
also eliminated the listing of prior art documents accessible in Public 
PAIR on reexamination certificates to expedite the issuance of 
reexamination certificates. See Elimination of the Listing of Prior Art 
Documents on Reexamination Certificates, 1371 Off. Gaz. Pat Office 95 
(October 11, 2011). The USPTO is seeking public comment on what 
information (e.g., prior art references, classification information, 
etc.) should be retained on the face of the patent now that processing 
and examination is conducted in an electronic environment.
    III. Questions for Written Comments and Discussion at the 
Roundtable Event: The USPTO seeks written comments and participant 
feedback at the roundtable on the following questions related to how 
the USPTO should efficiently utilize information from applicant's other 
applications having the same or substantially the same disclosure to 
automatically provide U.S. examiners with relevant information at the 
earliest stage of examination and on what information should be part of 
a patent:
    1. In balancing the goals of examination quality and efficiency, 
should the USPTO monitor other applications, besides domestic parent 
and counterpart foreign applications, for relevant information located 
therein for consideration in the instant U.S. application? If so, which 
other applications should be monitored (e.g., siblings, applications 
involving the same or related technology, etc.)?
    2. What is the most convenient way to bring an application to the 
USPTO's attention that should be monitored for information during the 
examination of a U.S. application (e.g., automated system, applicant 
notifies the USPTO, etc.)?
    3. How should the USPTO determine which information from the 
monitored applications to provide examiners while ensuring they are not 
overburdened with immaterial and marginally relevant information?
    4. If the USPTO were to import information from applicant's other 
applications, how should the USPTO document the information imported 
into the image file wrapper of the instant U.S. application? For 
example, should the record reflect which domestic parent or counterpart 
foreign application the information was imported from, the date that 
the information was imported, and whether the examiner considered the 
imported information?
    5. Taking into consideration the information that is publicly 
available in PAIR, what information should be part of a patent? For 
example, should prior art references and classification information 
still be listed on the front page of a patent?

    Dated: August 18, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-20703 Filed 8-26-16; 8:45 am]
 BILLING CODE 3510-16-P