| Prioritized Examination |
Referenced Items (249, 250, 251, 252) |
(252) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0035]
Enhanced Examination Timing Control Initiative;
Notice of Public Meeting
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of public meeting; request for comments.
SUMMARY: This notice announces a public meeting to solicit public opinions
on an initiative being considered by the United States Patent and Trademark
Office (USPTO) to provide applicants with greater control over when their
applications are examined and to enhance work sharing between intellectual
property offices. Under the initiative, for applications filed in the USPTO
that are not based on a prior foreign-filed application (e.g., that do not
claim foreign priority benefit), applicant would be able to: (1) Request
prioritized examination (Track I); (2) for non-continuing applications,
request a delay lasting up to 30 months in docketing for examination (Track
III); or (3) obtain processing under the current procedure (Track II) by
not requesting either (1) or (2). For applications filed in the USPTO that
are based on a prior foreign-filed application, no action would be taken by
the USPTO until the USPTO receives a copy of the search report, if any, and
first office action from the foreign office and an appropriate reply to the
foreign office action as if the foreign office action was made in the
application filed in the USPTO. Following or concurrent with the submission
of the foreign office action and reply, applicant may request prioritized
examination or obtain processing under the current procedure.
This initiative aims both to provide applicants with the type of
examination they need and to reduce the overall pendency of patent
applications (which currently stands at almost three years). Overall
pendency would be decreased in three ways: (1) Increased resources in
Track 1 would result in increased output; (2) reuse of search and
examination work done by other offices would result in greater efficiency;
and (3) applicants who chose Track III because their applications were of
lower value might ultimately decide not to pursue their application
examination efforts that had been expended on the applications. As a part
of the three-tracks, an applicant may request and pay for a supplemental
search from a participating intellectual property granting office. Any
member of the public may submit written comments on this initiative being
considered by the USPTO.
Dates and Times: The public meeting will be held on July 20, 2010,
beginning at 1:30 p.m.
Persons interested in attending the meeting must register by 5 p.m.
Eastern Standard Time (EST) on July 16, 2010.
Written comments must be submitted by August 20, 2010.
ADDRESSES: The public meeting will be held at the USPTO, in the South
Auditorium of Madison West, 600 Dulany Street, Alexandria, VA 22314.
Written comments should be sent by electronic mail message over the
Internet addressed to 3trackscomments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments-Patents, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Robert A. Clarke. Although comments may be submitted by mail,
submission via e-mail to the above address is preferable.
The written comments will be available for public inspection at the
Office of the Commissioner for Patents, located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via
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the USPTO Internet Web site (address: http://frwebgate.access.gpo.gov/cgi-
bin/leaving.cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.gov).
Because comments will be made available for public inspection, information
that is not desired to be made public, such as an address or phone number,
should not be included.
FOR REGISTRATION TO GIVE A PRESENTATION IN THE MEETING: If you wish to make
an oral presentation at the meeting, you must register by sending an e-mail
to the e-mail address, 3trackscomments@uspto.gov, by 5 p.m. EST on July 13,
2010. See the registration information provided below.
FOR FURTHER INFORMATION CONTACT: Robert A. Clarke ((571) 272-7735), Deputy
Director, Office of Patent Legal Administration, directly by phone, by
e-mail to Robert.Clarke@uspto.gov, or by mail addressed to: Mail Stop
Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450. For further information on supplemental searches, contact Mary
Critharis, 571-272-8468, Senior Patent Counsel, External Affairs, directly
by phone, or by e-mail to Mary.Critharis@uspto.gov.
SUPPLEMENTARY INFORMATION: This notice announces a public meeting to
solicit public opinions on an initiative being considered by the USPTO to
provide applicants with greater control over when their applications are
examined and to promote greater efficiency in the patent examination
process. For applications filed in the USPTO which are not based on a prior
foreign-filed application (e.g., that do not claim foreign priority benefit
under 35 U.S.C. 119(a)-(d)), an applicant could: (1) Request prioritized
examination; (2) for non-continuing applications, request an applicant-
controlled delay lasting up to 30 months prior to docketing for
examination; or (3) obtain processing under the current procedure by not
requesting either (1) or (2). For applications filed in the USPTO that are
based on a prior foreign-filed application, no action would be taken by the
USPTO until the USPTO received, in the U.S. application: (1) A copy of the
search report, if any; (2) a copy of the first office action from the
foreign office where the application was originally filed; and (3) an
appropriate reply to the foreign office action. Where the foreign office
action indicated that the foreign-filed application was allowable, all that
would be required for the appropriate reply would be notice to the USPTO.
Where one or more rejections were made in the foreign office action,
applicant's reply could include an amendment but would have to include
arguments regarding why the claims in the USPTO-filed application were
allowable over the evidence relied upon in the foreign office action.
Following or concurrent with the submission of the foreign office action
and reply, applicant could request prioritized examination or obtain
processing under the current procedure. This proposal would increase the
efficiency of the examination of these applications by avoiding or reducing
duplication of efforts by the office of first filing and the USPTO. Because
efficiency gains are anticipated in the roughly one half of all
applications that are filed first abroad, the result should be substantial
improvement in the USPTO's performance. By contrast, under the PTO's
primary current mechanism for worksharing, the patent prosecution highway
program, scaling up has been limited by the fact that it remains voluntary
and can only be utilized in situations where the USPTO has not already
begun its examination work. Perhaps for this reason, major patent filing
jurisdictions like the Japanese and European patent office have already
adopted office-driven systems in which they address first the applications
for which they are the office of first filing.
Since the requirement to provide a copy of the search report, first
action and an appropriate reply is being considered to avoid or reduce
duplication of effort, the USPTO seeks comment on whether this requirement
should be limited to first filings at offices that have qualified as
international searching authorities under PCT Article 16. In addition, in
order to avoid delays in disclosure, the USPTO seeks comment on whether the
requirement to provide a copy of the search report, first action, and an
appropriate reply (which would result in examination delay at the office of
second filing) should be limited to applications that are published.
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While it is believed that most applicants will continue to file
applications first in their national or regional office based on business
needs or costs of translation, comment is also requested on whether the
USPTO should anticipate a larger number of applications being filed at the
USPTO first rather than an applicant's national office. Additionally, would
this filing pattern change if (as proposed in various patent law reform
bills) a foreign filing date could be used as a prior art date under US
law?
The idea of office-driven worksharing, or SHARE ("Strategic Handling of
Applications for Rapid Examination") has already been the subject of some
public commentary.
On October 21, 2009, the USPTO published a Notice in the Federal
Register inviting the public to submit written comments and participate in
a roundtable discussion on work sharing. See Request for Comments and
Notice of Roundtable on Work Sharing for Patent Applications, 74 FR 54028
(October 21, 2009). Many of the comments regarding SHARE raised the concern
that delayed examination of the foreign origin applications may work a
disadvantage to USPTO first filers with respect to the patent term
adjustment (PTA) that may accrue. This concern could be addressed by giving
all applicants some control on when their application is examined so that
the applicant can best benefit from the patenting process. Specifically,
under the current proposal, those who file first in a foreign office can
choose subsequently to accelerate in the USPTO. Some were also concerned
that SHARE would only work well if coordinated with other offices. The
coordination has already started with some offices. For example, the USPTO
and the Korean Intellectual Property Office (KIPO) are conducting a small-
scale pilot to gather empirical data and test the feasibility of the SHARE
concept. More recently, the USPTO and the United Kingdom Intellectual
Property Office (UKIPO) committed to develop a plan to optimize reuse of
work on patent applications that are jointly filed with the USPTO and
UKIPO.
Others suggested that the search or examination fees be reduced or
delayed. The instant proposal permits deferral of certain fees if Track III
examination is requested. Because many comments focused on examination
delays in the office of first filing, comments to this notice are requested
on whether PTA should be limited by a request by applicant for deferred
examination in the office of first filing. Similarly, comments are also
requested on whether PTA should be limited if the applicant does not
request accelerated examination in the office of first filing.
The USPTO also intends to harmonize the existing examination procedures
for applications having been granted accelerated or "special" status
including: (1) Applications under the accelerated examination program; (2)
applications under the various patent prosecution highway programs; (3)
applications advanced under other programs under 37 CFR 1.102 (e.g.,
applicant's age or health); or (4) national stage applications advanced out
of turn because an international preliminary examination report (IPER)
prepared by the United States International Preliminary Examining Authority
or a written opinion on the international application prepared by the
United States International Searching Authority states that the criteria of
novelty, inventive step (non-obviousness), and industrial applicability, as
defined in PCT Article 33(1)-(4), have been satisfied for all of the claims
presented in the application entering the national stage. The USPTO is
holding a public meeting and inviting public comments to seek views on
whether this initiative should go forward and what changes should be
considered. Further meetings may be announced by the USPTO, as appropriate.
The USPTO recognizes that the traditional "one-size fits all"
examination timing may not provide applicants much opportunity to choose
the examination timing they need. Therefore, in addition to the current
standard procedure (Track II), the USPTO is considering providing
applicants with greater ability to seek prioritized examination (Track I)
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or, for non-continuing applications that do not claim the benefit of a
prior foreign-filed application, the ability to seek an applicant
controlled up to 30-month queue prior to docketing for examination (Track
III). By allowing applicants some control over the timing of examination,
it is anticipated that examination resources would be better aligned with
the needs of innovators.
Prioritized Examination (Track I): For some applicants with a currently
financed plan to commercialize or exploit their innovation or a need to
have more timely examination results to seek additional funding, more rapid
examination is necessary. While some programs are currently available to
prioritize applications (e.g., the accelerated examination program and the
petition to make special program), some applicants neither want to perform
the search and analysis required by the accelerated examination program nor
can they seek special status based on the conditions set forth in 37 CFR
1.102. For such applicants, the USPTO is proposing optional prioritized
examination upon applicant's request and payment of a cost recovery fee. A
request for prioritized examination may be made in a USPTO first-filed
application at any time and may be made in any other application only after
receipt of a copy of the search report, if any, and first action on the
merits from the intellectual property office in which the relied-upon
application was filed and an appropriate reply to that action in the
application filed in the USPTO. On granting of prioritized status, the
application would be placed in the queue for prioritized examination.
The fee would be set at a level to provide the resources necessary to
increase the work output of the USPTO so that the aggregate pendency of
non-prioritized applications would not increase due to work being done on
the prioritized application. The fee would also be set to recover any other
additional costs associated with processing the prioritized application.
For example, if work output is to be increased by hiring new examiners,
then the fee for prioritized examination would include the cost of hiring
and training a sufficient number of new employees to offset the production
work used to examine prioritized applications. Under the USPTO's current
statutory authority, the USPTO is not permitted to discount the fee for
small entity applicants. Should the USPTO's authority to set fees be
enhanced, it is anticipated that the USPTO would discount this fee for
small and micro entity applicants, given the substantial fee that would
need to be charged to recover all of the costs associated with the
contemplated service.
The USPTO is also considering limiting the number of claims in a
prioritized application to four independent and thirty total claims. In
addition, the USPTO is considering requiring early publication of
prioritized applications so that applications would be published shortly
after a request for prioritization is granted, or eighteen months from the
earliest filing date claimed, whichever is earlier.
All applications prioritized on payment of a fee, or accelerated or
advanced out-of-turn under existing programs, would be placed in a single
queue for examination on the merits and would be taken up out-of-turn
relative to other new or amended applications. The goals for handling
applications in this queue would be to provide a first Office action on the
merits within four months and a final disposition within twelve months of
prioritized status being granted. If this process is implemented, the USPTO
anticipates that it would provide statistics on its progress in meeting
these goals on its Internet Web site.
To maximize the benefit of this track, applicant should consider one or
more of the following: (1) Acquiring a good knowledge of the state of the
prior art to be able to file the application with a clear specification
having a complete schedule of claims from the broadest that the applicant
believes he is entitled in view of the state of the prior art to the
narrowest that the applicant is willing to accept; (2) filing replies that
are completely responsive to the prior Office action and within the reply
period (shortened) set in the Office action; and (3) being prepared to
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conduct interviews with the examiner.
Traditional Timing (Track II): Applications for which neither
prioritization nor an applicant-controlled up to 30-month queue prior to
docketing for examination is requested will be processed traditionally,
except that applicants may request prioritized examination at any time
(e.g., on filing of a notice of appeal) and, for any non-continuing
application, applicants may request an applicant-controlled up to 30-month
queue prior to being placed on the docket for examination on the merits. An
application that claims the benefit of a prior-filed foreign application
will not be docketed for examination in Track II until: (1) A copy of the
search report, if any, (2) a copy of the first action on the merits by the
intellectual property office in which the priority application was filed,
and (3) a reply to that action in the application filed at the USPTO has
been received.
An applicant-controlled up to 30-month queue prior to docketing (Track
III): Some applicants file an application just prior to the statutory bar
date but before a commercially viable plan for exploitation of the
innovation has been developed or financed. To better provide for the timing
of examination that such applicants desire and to provide a similar time
period to that provided internationally, the USPTO is considering
permitting any applicant in an application that does not claim benefit of a
prior-filed foreign application or prior non-provisional application to
select, on filing or in reply to a notice to file missing parts, an
applicant-controlled up to 30-month queue prior to docketing for
examination. In order to avoid delays in notice to the public, any
application requesting Track III must also be published as an 18-month
patent application publication. An application granted this status would be
placed in a queue for applicant to request examination and pay the
examination fee with the surcharge (if not already paid) within thirty
months of the actual filing date of the application or any relied-upon
provisional application (i.e., to which benefit is claimed under 35 U.S.C.
119(e)). Failure to request examination within the 30-month period would
result in abandonment of the application. The request for examination and
examination fee (and surcharge) would be due on the 30-month date but could
be submitted early (e.g., on filing of the application) with a request that
the application remain in the pre-examination queue for a period of time
(e.g., up to 30 months from filing). On expiration of the time period, the
application would be placed in the queue for examination.
On receipt of the request for this queue, the USPTO would determine if
the application was ready for publication as a patent application
publication (except for the receipt of the examination fee) and determine
if any request for nonpublication made on filing had been rescinded. If
both conditions were met, the application would be placed in a queue to
await a request for examination and payment of the examination fee. If the
application was not ready for publication, a requirement to place the
application in condition for publication would be made and, once satisfied,
the application would be placed in the 30-month queue. The request for
examination and payment may be made at any time during the 30-month period.
If no request is made within the 30-month period, the application would be
held abandoned. The examination fee and the surcharge may be paid within
the 30-month period or may be submitted after a timely request for
examination is filed on notice of non-payment by the USPTO, along with any
required extension of time fees.
Upon receipt of the examination request and fee, the application would
be placed in the queue for examination, but the receipt date of the
examination request would be used as the "date in queue." Thus, the
application will be taken up for examination as if the request date was the
application's actual filing date. If applicants determine that more rapid
examination is desirable, then they may request (and pay the required fee)
for prioritized examination while the application is in the queue for
examination.
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Currently, the USPTO is considering a rule to offset any positive PTA
accrued in a Track III application when applicant requests that the
application be examined after the aggregate average period to issue a first
Office action on the merits. For example, if the aggregate average time to
issue a first Office action is 20 months and applicant requests that the
application be examined at month 30, the proposed PTA reduction would be 10
months beginning on the expiration of the 20-month period and ending on the
date on which applicant requested examination to begin. The overlap with
the aggregate average period when the USPTO would not be able to have
issued a first Office action on the merits would not be treated as an
offsetting reduction.
Similarly, for an application in any of the three tracks that claims
foreign priority, the USPTO is considering a rule to offset positive PTA
accrued in the application when applicant files the required documents
(that include a copy of the search report, if any, and first office action
from the foreign office and an appropriate reply to the foreign office
action as if the foreign office action was made in the application filed at
the USPTO) after the aggregate average period to issue a first Office
action on the merits. For example, if the aggregate average time to issue a
first Office action is 20 months and applicant submits the required
documents 30 months after the filing of the application, then the proposed
PTA reduction would be 10 months beginning on the expiration of the
20-month period and ending on the date of the filing of the required
documents. Thus, delays by foreign offices beyond the aggregate average
time for the USPTO to issue a first Office action on the merits would be an
offsetting reduction against any positive PTA accrued by the delay in
issuing a first Office action while the USPTO awaits the preparation of a
search report and first action by the office of first filing.
In Tracks I and II, if the U.S. application claims the benefit of a
prior-filed foreign application, and the relied-upon foreign application is
abandoned prior to an action on the merits being made available, applicant
must notify the USPTO and request that the application be treated for
examination queuing purposes as if the foreign priority claim had not been
made. The USPTO is considering making the failure to notify the USPTO
within three months of the abandonment in the foreign office trigger a PTA
offset as the USPTO would not appreciate the need to treat the application
as if first-filed in the USPTO until such notice is given. Similarly, if
the office of first filing has a practice of not producing actions on the
merits, applicant would need to notify the USPTO that the application
should be treated for examination queuing purposes as if the foreign
priority claim had not been made.
The USPTO is also considering negotiating with one or more intellectual
property granting offices (IPGOs) to provide an optional service for
applicants at the USPTO to request that the USPTO obtain from one or more
IPGOs a supplemental search report. This supplemental search report will be
considered in preparation of the first Office action on the merits by the
examiner. An additional search will be conducted by the examiner at the
USPTO. This option would be subject to the USPTO negotiating appropriate
agreements with one or more IPGOs. The USPTO is also considering providing
a short period for applicant to review and make any appropriate amendments
or remarks after the supplemental search is transmitted prior to preparing
the first action.
Comments on one or more of the following questions would be helpful:
1. Should the USPTO proceed with any efforts to enhance applicant
control of the timing of examination?
2. Are the three tracks above the most important tracks for innovators?
3. Taking into account possible efficiency concerns associated with
providing too many examination tracks, should more than three tracks be
provided?
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4. Do you support the USPTO creating a single queue for examination of
all applications accelerated or prioritized (e.g., any application granted
special status or any prioritized application under this proposal)? This
would place applications made special under the "green" technology
initiative, the accelerated examination procedure and this proposal in a
single queue. For this question assume that a harmonized track would permit
the USPTO to provide more refined and up-to-date statistics on performance
within this track. This would allow users to have a good estimate on when
an application would be examined if the applicant requested prioritized
examination.
5. Should an applicant who requested prioritized examination of an
application prior to filing of a request for continued examination (RCE) be
required to request prioritized examination and pay the required fee again
on filing of an RCE? For this question assume that the fee for prioritized
examination would need to be increased above the current RCE fee to make
sure that sufficient resources are available to avoid pendency increases of
the non-prioritized applications.
6. Should prioritized examination be available at any time during
examination or appeal to the Board of Patent Appeals and Interferences
(BPAI)?
7. Should the number of claims permitted in a prioritized application be
limited? What should the limit be?
8. Should other requirements for use of the prioritized track be
considered, such as limiting the use of extensions of time?
9. Should prioritized applications be published as patent application
publications shortly after the request for prioritization is granted? How
often would this option be chosen?
10. Should the USPTO provide an applicant-controlled up to 30-month
queue prior to docketing for examination as an option for non-continuing
applications? How often would this option be chosen?
11. Should eighteen-month patent application publication be required for
any application in which the 30-month queue is requested?
12. Should the patent term adjustment (PTA) offset applied to
applicant-requested delay be limited to the delay beyond the aggregate
USPTO pendency to a first Office action on the merits?
13. Should the USPTO suspend prosecution of non-continuing, non-USPTO
first-filed applications to await submission of the search report and first
action on the merits by the foreign office and reply in USPTO format?
14. Should the PTA accrued during a suspension of prosecution to await
the foreign action and reply be offset? If so, should that offset be linked
to the period beyond average current backlogs to first Office action on the
merits in the traditional queue?
15. Should a reply to the office of first filing office action, filed in
the counterpart application filed at the USPTO as if it were a reply to a
USPTO Office action, be required prior to USPTO examination of the
counterpart application?
16. Should the requirement to delay USPTO examination pending the
provision of a copy of the search report, first action from the office of
first filing and an appropriate reply to the office of first filing office
action be limited to where the office of first filing has qualified as an
International Searching Authority?
17. Should the requirement to provide a copy of the search report, first
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action from the office of first filing and an appropriate reply to the
office of first filing office action in the USPTO application be limited to
where the USPTO application will be published as a patent application
publication?
18. Should there be a concern that many applicants that currently file
first in another office would file first at the USPTO to avoid the delay
and requirements proposed by this notice? How often would this occur?
19. How often do applicants abandon foreign filed applications prior to
an action on the merits in the foreign filed application when the foreign
filed application is relied upon for foreign priority in a U.S.
application? Would applicants expect to increase that number, if the three
track proposal is adopted?
20. Should the national stage of an international application that
designated more than the United States be treated as a USPTO first-filed
application or a non-USPTO first-filed application, or should it be treated
as a continuing application?
21. Should the USPTO offer supplemental searches by IPGOs as an optional
service?
22. Should the USPTO facilitate the supplemental search system by
receiving the request for supplemental search and fee and transmitting the
application and fee to the IPGO? Should the USPTO merely provide criteria
for the applicant to seek supplemental searches directly from the IPGO?
23. Would supplemental searches be more likely to be requested in
certain technologies? If so, which ones and how often?
24. Which IPGO should be expected to be in high demand for providing the
service, and by how much? Does this depend on technology?
25. Is there a range of fees that would be appropriate to charge for
supplemental searches?
26. What level of quality should be expected? Should the USPTO enter
into agreements that would require quality assurances of the work performed
by the other IPGO?
27. Should the search be required to be conducted based on the U.S.
prior art standards?
28. Should the scope of the search be recorded and transmitted?
29. What language should the search report be transmitted in?
30. Should the search report be required in a short period after filing,
e.g., within six months of filing?
31. How best should access to the application be provided to the IPGO?
32. How should any inequitable conduct issues be minimized in providing
this service?
33. Should the USPTO provide a time period for applicants to review and
make any appropriate comments or amendments to their application after the
supplemental search has been transmitted before preparing the first Office
action on the merits?
Registration Information: The USPTO plans to make the meeting available
via Web cast. Web cast information will be available on the USPTO's
Internet Web site before the meeting. The written comments and list of the
meeting participants and their associations will be posted on the USPTO's
Internet Web site (http://frwebgate.access.gpo.gov/cgi-bin/leaving.
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cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.gov).
When registering, please provide the following information: (1) Your
name, title, and, if applicable, company or organization, address, phone
number, and e-mail address; and (2) if you wish to make a presentation, the
specific topic or issue to be addressed and the approximate desired length
of your presentation.
There is no fee to register for the public meeting and registration will
be on a first-come, first-serve basis. Early registration is recommended
because seating is limited. Registration on the day of the public meeting
will be permitted on a space-available basis beginning at 1:30 p.m. Eastern
Standard Time, on July 20, 2010.
The USPTO will attempt to accommodate all persons who wish to make a
presentation at the meeting. After reviewing the list of speakers, the
USPTO will contact each speaker prior to the meeting with the amount of
time available and the approximate time that the speaker's presentation is
scheduled to begin. Speakers must then send the final electronic copies of
their presentations in Microsoft PowerPoint or Microsoft Word to
3trackscomments@uspto.gov by July 16, 2010, so that the presentation can be
displayed in the Auditorium.
If you need special accommodations due to a disability, please inform
the contact person (see FOR FURTHER INFORMATION CONTACT) by July 16, 2010.
May 25, 2010 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1355 OG 323]