| CREATE Act, Examination Instructions and Guidelines |
Referenced Items (274, 275, 276, 277, 278, 279, 280, 281, 282, 283, 284, 285, 286, 287, 288, 289, 290, 291, 292, 293) |
(293) Pilot Concerning Public Submission
of Peer Reviewed Prior Art
I. Introduction
As part of the efforts of the United States Patent and Trademark Office
(Office) to implement its Strategic Plan, the Office is pleased to announce
a pilot to determine the extent to which the organized submission of
documents together with comments by the public will provide useful prior
art for examiners. Advances in Internet-based methods of collaboration have
produced both technological and business models that have greatly increased
productivity in the American economy. Recently a group of academic and
business professionals have proposed a collaborative, online process in which
members of the public pool together their knowledge and locate potential
prior art. This pilot will test whether such collaboration can effectively
locate prior art that might not otherwise be located by the Office during the
typical examination process.
A limited number of volunteer applicants who filed or will be
filing applications in the computer arts will have the opportunity to
consent to the placement of their published applications into this
pilot. Collaborative review will be conducted on the peer-to-patent
website. Peer-to-Patent is a non-Office website developed by the
peer-to-patent Community Patent Review Project (CPRP) of the Institute
for Information Law and Policy at NY Law School for this pilot. These
applications will be analyzed by members of the public, who, in an
organized manner using Internet Peer Review techniques, will determine
the (up to) ten best documents, which will be submitted to the Office
under a waiver of certain sections of both 37 CFR Secs. 1.99 and 1.291.
The volunteer applicants must consent to have comments
submitted with each of the documents explaining how the documents
relate to the disclosed invention as defined by the claims. The goal of
this pilot is to test whether the organized collection and submission
of documents together with comments by the public will produce better
examination results by presenting prior art known by the public to the
examiner early in the prosecution, specifically before the first Office
action. This pilot program is expected to begin on June 15, 2007, and
end on June 16, 2008 (with submissions accepted from Peer-to-Patent
until October 17, 2008), or after 250 participating applications have
been submitted to the Office, which ever occurs first. Results will be
compiled by the Office and published in a report on the effectiveness
of this public submission process. As the Office will be approving
applications for participation with the pilot, requests to participate
will be dismissed as moot after the close of the pilot.
The Office reserves the right to discontinue this pilot program
if continuation is not in the best interests of the Office.
II. Cooperation with New York Law School's Institute for Information Law
and Policy
The New York Law School's Institute for Information Law and
Policy will manage the public aspects of the pilot and run the
Peer-to-Patent website located at www.peertopatent.org. More
information on this initiative can be found at
http://dotank.nyls.edu/communitypatent. [These links to non-Federal
Government Web sites do not imply endorsement of this particular
organization or the content on these sites]. Peer-to-Patent will be
responsible for the management of the Internet based review process by
the public that will result in the submission of a list of up to ten
(10) documents as described below. The Office did not establish
Peer-to-Patent or the Community Patent Review Project, and will not set
the membership or agenda, nor assume authority or control over
Peer-to-Patent or the Community Patent Review Project. The Office and
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the Community Patent Review Project are independent entities, and are
not agents of each other. Neither party is authorized or empowered to
act on behalf of the other with regard to any contract, warranty or
representation as to any matter, and neither party will be bound by the
acts or conduct of the other.
The Office will provide Peer-to-Patent with published patent application
data to aid in the administration of the pilot.
III. Overview and Discussion of the Process
The Office is authorized to engage in this pilot under 35 U.S.C. Sec.
2(b)(11), which provides that the USPTO "may conduct programs, studies, or
exchange of items or services regarding domestic and international
intellectual property law and the effectiveness of intellectual property
protection domestically and throughout the world."
To facilitate this pilot, notwithstanding any provision of Title 37 of
the Code of Federal Regulations, the Office for certain (i.e. accepted)
applications will accept submissions from Peer-to-Patent that:
(1) are received by the Office within 18 weeks, corresponding
to a period of four (4) months and two weeks from the date of the
publication of the application. A submission form that is located at:
http://www.uspto.gov/web/patents/peerpriorartpilot/submission.pdf must
accompany the submission.
(2) are limited to ten (10) or fewer documents for
consideration as prior art by the Office during the examination process
and accompanying comments. Only comments regarding the relevance of the
submitted document as prior art will be considered. Other comments,
such as a comment on the applicability of 35 USC Sec. 112, will not be
considered; these comments will be either redacted or discarded in
their entirety by the Office.
In order to facilitate the operation of the pilot program and
to collect an adequate sample of data from which to make an effective
quantitative evaluation, this pilot program will initially be
restricted to applications assigned to Technology Center 2100. With the
exception of the provisions of the limited waiver of 37 CFR Secs. 1.99
and 1.291, the examination process for these applications will be
performed in a normal manner following established methods. However,
participating applications will be advanced out of turn for
examination, for the initial examination on the merits, so the results
of the pilot can be reviewed in a short time frame. Participating
applications must have been filed under 35 USC Sec. 111(a) or have
entered the national phase under 35 USC Sec. 371.
Effective June 15, 2007, the Office will waive aspects of 37
CFR Secs. 1.99 and 1.291 for submissions presented under and meeting the
conditions of this program. All other submissions made under either 37
CFR Sec. 1.99 or Sec. 1.291 will not be affected, even those
submitted by non-participating individuals for one of the volunteer
applications. This pilot program does not affect any procedures permitted
under 37 CFR Secs. 1.99 and 1.291, nor does it contradict 35
USC Sec. 122 as applicants must provide express written consent to the
inclusion of the explanation submitted by Peer-to-Patent coordinators
regarding how the prior art documents relate to the disclosed invention
as defined by the claims.
Existing Sec. 1.99 permits third-party submissions that satisfy
rule requirements including fees, service, timing and format
requirements. (Sec. 1.99(d)).
Existing Sec. 1.291 permits public protests that satisfy rule
requirements including service, timing, written consent, and format
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requirements. See 37 CFR Secs. 1.99 and 1.291 for details.
A. Requirements and Conditions Applicable to Applicants
For the purposes of this pilot, the existing requirements of 37
CFR Secs. 1.99 and 1.291 will be waived for submissions that comply with
the following conditions:
(1) Applicant will submit to the Office a written consent
as specified below for a specific application to participate in the
program, with the consent naming the real party in interest for the
application.
(a) The Office will accept no more than 15 total written
consents (corresponding to 15 total separate applications) from an
Applicant, Applicant's assignee (to include subsidiaries), or
Applicant's affiliates. Patent applications that participate in the
peer review process, but are not granted advancement of examination for
any reason (e.g. because they do not receive at least one document
submitted as a potential reference) will not be counted against the 15
total for any one applicant, and will be redocketed to the order of
examination they would have held if the application had not partially
participated in the peer review project.
(b) In addition, to ensure a representative sample of
participants, the USPTO will reserve 15% of participation slots for
small entities as defined by 37 C.F.R. Sec. 1.27. This percentage
approximates the percentage of applicants within Technology Center 2100
that are small entities.
(2) Timing. There are two restrictions involved, the
timing of the consent, and the posting capacity of the Peer-to-Patent
website.
(a) The consent is timely. As described in detail below
in the section labeled "Timing Considerations," the timing of the
publication of the application must occur during the pilot and provide
a period no less than three (3) months and no more than four (4) months
for posting (and evaluation) at the Peer-to-Patent website.
(b) The actual timing of the posting of the applications
may vary due to capacity limitations of the Peer-to-Patent website.
(3) The consent includes an express written authorization
for the Peer-to-Patent submission to the Office to include comments
describing the relevance of the document to the disclosed invention as
defined by the claims. Applicants will be required to use an
Office-prepared consent form located at:
http://www.uspto.gov/web/patents/peerpriorartpilot/consent.pdf.
(4) The Application must not have previously been filed
for Accelerated Examination (see 1308 Off. Gaz. Pat. Office 112 (July
18, 2006).
(5) The Application is not an international application
filed under the Patent Cooperation Treaty prior to entry into the
national phase under 35 USC Sec. 371.
The Office will determine if the consent and associated
application meet all of the Office requirements for this pilot. If so,
the Office will notify Applicant and the Peer-to-Patent coordinators of
the inclusion of the application for the pilot. If the consent and
application do not meet all requirements or the pilot has ended, the
applicant will be notified of the decision not to include the
application in the pilot.
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B. Requirements and Conditions Applicable to the Third-Party Submitter
After an application has been accepted into the pilot and has
been posted at the Peer-to-Patent website for the appropriate period,
the third-party submissions (the peer review consisting of prior art
and comments) will be forwarded by Peer-to-Patent to the Office, and
must comply with the following conditions:
(1) The submission forwarded by Peer-to-Patent must be
received by the Office within 18 weeks, corresponding to a period of
four (4) months and two weeks from the date of the publication of the
application. It is expected that this period will allow sufficient time
to complete the Internet-based Peer process.
(2) The submission may include up to ten (10) documents
for consideration as prior art by the Office during the examination
process and accompanying comments. Only comments regarding the
relevance of the submitted document as prior art will be considered.
Other comments, such as a comment on the applicability of 35 USC Sec.
112, will not be considered; these comments will be either redacted or
discarded in their entirety by the Office.
(3) Each submission will be accompanied by the form that is located at:
http://www.uspto.gov/web/patents/peerpriorartpilot/submission.pdf.
C. Examination by the Office
(1) Applications that successfully complete the posting and
review process as outlined above with at least one prior art reference
document (including a compliant submission from Peer-to-Patent) will
receive advancement of examination for the first Office action on the
merits, "to expedite the business of the Office" (see 37 CFR Sec.
1.102(a)) so the results of the study can be obtained in a shorter
time. The application will receive a first action using the Office's
usual procedures, with the examiner reviewing the submission as well as
all documents produced from the normal Office search. Data will be
maintained on the use of the documents submitted under the program and
summary statistics will be publicly available. Examiners will consider
all documents and comments submitted by the peer review process and
will give those documents and comments the weight the examiner deems
appropriate. Examiners will only consider comments regarding the
application of the submitted document as prior art. Other comments,
such as a comment on the applicability of 35 U.S.C. Sec. 112, will not be
considered. These comments will be either redacted or discarded in
their entirety by the Office.
(2) Further prosecution of the applications submitted under
this program will continue in the conventional manner.
IV. Program Administration
Various details in the administration of this program and the
processing of applications submitted there under will be considered and
resolved as they arise. The Office will endeavor to conduct the pilot
in a manner that will elicit the best data for evaluation of the
effectiveness of the submitted documents, consistent with the proper
prosecution of the participating applications. For example, an
Applicant may be notified by the Office of any defects found in the
consent, and shall receive an opportunity to correct the defects.
Similarly, the Peer-to-Patent coordinators may be notified by the
Office of any defects found in the submission, and shall receive an
opportunity to correct the defects.
V. Timing Considerations
The following examples illustrate some of the timing considerations for
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which Applicants should be aware:
Example 1: Application Previously Filed and Expected to Publish During
Pilot.
Applications previously filed and having an expected date of
publication during the pilot period are eligible for participation. For
example, an application previously filed during the month of December
2005, and filed with no benefit claim under 35 U.S.C. Sec. 120 has a
projected publication date sometime during the month of June 2007. In
this situation, Applicant may volunteer for inclusion in the pilot.
Provided the application is assigned to TC 2100 and was not filed under
Accelerated Examination, and provided the Peer-to-Patent website has
sufficient capacity for posting and evaluation of the application, the
Office would accept the application as eligible for participation in
the pilot.
Example 2: Application Requires Request for Early Publication so as to
Publish During Pilot.
Applications either previously filed or filed during the pilot
period which do not have a projected publication date during the pilot
may become eligible for participation provided Applicant files a
Request for Early Publication (or voluntary publication, if the
application was filed prior to 11/29/2000) so as to induce publication
during the pilot period. For example, Applicant might file an
application during the month of July 2007, along with the filing of a
Request for Early Publication. This application would have a projected
date of publication sometime during the month of November 2007. In this
situation, Applicant may volunteer for inclusion in the pilot. Provided
the application is assigned to TC 2100 and was not filed under
Accelerated Examination, and provided the Peer-to-Patent website has
sufficient capacity for posting and evaluation of the application, the
Office would accept the application as eligible for participation in
the pilot.
Example 3: Application Previously Published.
An application previously published is ineligible for the pilot
unless the application was published within one month of the start of
the pilot program, because the submission by the Peer-to-Patent
coordinators must be received by the Office within four (4) months and
two weeks of the application's date of publication.
VI. Other Conditions Not Imposed by the Office
Participation in this pilot program may be subject to further
conditions as indicated by the Peer-to-Patent coordinators, who are
responsible for the prior art submission. The Office has no
responsibility for these further restrictions.
For instance, in the timing consideration examples provided
above, an application may be accepted for the pilot, yet is not
available for posting on the Peer-to-Patent website because the website
is handling its maximum capacity of current participants.
VII. Additional Information
For further information on this pilot, please email
PeerReviewPilot2007@USPTO.gov or contact Jack Harvey, Director, Technology
Center 2100 at Jack.Harvey@USPTO.gov. General inquiries on the Community
Patent Review Project may be addressed to info@peertopatent.org.
June 4, 2007 JOHN J. DOLL
Commissioner for Patents
[1319 OG 146]