USPTO Announces New Examination Rules, Seeks Comment on 33 Questions

Earlier today the official notice promised regarding the introduction of a Three-Track patent processing initiative was published in the Federal Register. It was not exactly what I expected, and perhaps I jumped the gun a bit, believing that what was to be published would be proposed rules. Instead, what was published was a detailed call for comments and the announcement of a public meeting to discuss the proposals sketched out. The public meeting will take place at the United States Patent and Trademark Office on July 20, 2010.

Reading the Federal Register Notice made me realize just how much things have changed over the last 18 months at the USPTO. During the Bush Administration the Patent Office largely treated patent professionals and applicants as the enemy; the ones really to blame for all the problems facing the Patent Office and the patent system. Odd coming from a Republican Administration, but that was indeed what we lived with. Now, however, the Patent Office seems to realize that they do not have a monopoly on good ideas, listen, act on what good ideas they like and seek further input from the community in order to refine and build out the ideas and initiatives they seek to implement. The flip in policy and approach is almost surreal.

In fact, the Federal Register Notice explains the genesis of how this Three-Track initiative took form. Back on October 21, 2009, the USPTO published a Federal Register Notice inviting the public to submit written comments and participate in a roundtable discussion on work sharing. The roundtable discussion was held at the USPTO campus on November 18, 2009. According to the Patent Office many of the comments regarding ‘‘Strategic Handling of Applications for Rapid Examination’’ (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. Other comments received suggested that the search or examination fees be reduced or delayed.

As a result of these comments the Patent Office set out to create an initiative that would address these problems and would provide efficiencies for patent processing, which would in turn positively impact the patent backlog. In fact, the Notice published today explains that the initiative being considered by the Patent Office would provide applicants with greater control over when their applications are examined. It is also believed that if implemented the initiative will enhance work sharing between intellectual property offices world wide, which I know is believed by many to be an important element in tackling the patent backlog.

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.

In essence, the USPTO is recognizing that the traditional ‘‘one-size fits all’’ examination timing does not provide applicants much opportunity to choose the examination timing they need. While many applicants will gladly pay extra to receive quick consideration from the Patent Office, there are also others, like biotech and pharma companies, as well as Universities, that would undoubtedly derive great benefit from being able to wait 30 months to initiate prosecution.

With respect to Track I, of particular note is the fact that the Patent Office is 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 no later than eighteen months from the earliest filing date. While this will undoubtedly make those in the patent community nervous, I suggest holding off on reactionary judgment. Obviously, limiting the number of claims conjures up nightmare memories about the failed claims and continuations rules. The big problem there though was not the limitation of claims, it was the limitation of continuations. If the Patent Office wants smaller, bite-size patent applications I see no problem with that as long as continuation practice is not compromised. I see no reason to suggest continuation practice will be compromised, remembering full well that David Kappos famously opposed the rules by filing an affidavit in support of the AIPLA amicus brief (see Kappos AIPLA affidavit) to the District Court while then Vice President of IBM. Nevertheless, this bears watching.

With respect to Track III, the Patent Office recognizes the real world reality that 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. Thus, there are undoubtedly some applicants that would not only tolerate, but appreciate, a slower patent process. Thus, an applicant that selects Track III would be afforded 30 months to initiate prosecution. The application would still be published at 18 months, but an application granted this status would be placed in a queue for applicant to request examination and pay the examination fee with the surcharge no later than thirty months from the filing date of the application or any relied-upon provisional application. Failure to request examination within the 30-month period would result in abandonment of the application.

While some may protest that this is deferred examination I say, so what even if it is? Why shouldn’t you be able to go at the pace you want? There are some virtually held hostage by a slow patent system, and those that would prefer it to be slower, so why not let the market sort it out and allow the Patent Office to prioritize simply by giving patent applicants the service they request? What a novel concept.

Additionally, if this is deferred examination so is the Patent Cooperation Treaty process that requires you to enter the national phase by 30 months. So what exactly is the harm of having a domestic wait period that coincides with the international wait period? None as far as I can see. On top of that, how is more choices ever a bad thing? Continue to use Track II if you like things the way they are, but we all know there will be those out and about crying the sky is falling. While it is fair to raise questions and concerns, offer suggests and point out flaws or ways to improve, the hysteria that so often accompanies patent announcements should be minimized at all costs. It simply doesn’t help your cause to sound like Chicken Little and/or to cry wolf unless the sky really is falling or there really is a big bad wolf about to devour you!

In any event, returning to the foreign origin aspects of the Three-Track initiative, the Patent Office believes the initiative will increase the efficiency of the examination by avoiding or at least reducing duplication of efforts by the office of first filing and the USPTO. The Patent Office points out that roughly one half of all applications the Office handles are filed first abroad, so any efficiencies and gains realized should result in substantial improvement in the USPTO’s performance. Also pointed out in the Notice was that other major patent offices, such as the Japanese and European patent offices, 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.

In total there are no fewer than 33 specific questions the Patent Office is seeking comment on. You can see the complete list in the Federal Register Notice at page 5 and 6 of the PDF, or pages 31767-31768 of the Federal Register. In the coming weeks I will dive into various of these questions here on IPWatchdog.com, and I will have a lot to say, particularly about question 32, which asks: “How should any inequitable conduct issues be minimized in providing this service?”

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. Web cast information will be available on the USPTO’s Internet Web site before the meeting. Those wishing to make an oral presentation at the must register by sending an e-mail to 3trackscomments (at) uspto.gov, by 5 p.m EST on July 13, 2010.

If anyone would like to offer an editorial, analysis or answer to any of the questions set forth for public comment I would be happy to publish appropriate, thoughtful articles here on IPWatchdog.com.