PTO Proposes Major New Patent Application Processing Rules

Kappos speaking at Center for American Progress, 6/2/2010, hinted of a major rulemaking announcement.

UPDATE: For discussion of the Federal Register Notice see USPTO Announces New Examination Rules, Seeks Comment on 33 Questions.

* * * * * * * * * * * * * * *

The United States Patent and Trademark Office is seeking public comment on a major new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process.  This newly proposed Three-Track program aims to provide applicants with the ability to go faster or slower through the patent process, which will in turn hopefully reduce the pendency of those patent applications that are the most time sensitive.

There will likely be those who oppose this Three-Track proposal, but as far as I can tell what is being proposed is a mechanism to speed your application up or slow your application down. Up until I attended the BIO International Conference in early May 2010 I couldn’t imagine why anyone would want to slow the process down, but there are indeed many who would prefer a slower patent process. I most often work in the software, computer and Internet technology areas where the patent process is extremely slow and getting fast patents is extremely important to attract investors and gain traction. In the biotech, pharma and University sectors, however, there is a great preference for a slower process because basic research is being undertaken and that might not ultimately prove fruitful.

A patent attorney who will remain nameless (unless he wants to go on the record) told me that he thinks in the space where he operates the Patent Office is too fast to suite his clients. The average time to First Action on the Merits is about 22 months, and his clients would prefer double that in most situations. That being the case, it seems as if a Three-Track program makes all the sense in the world. If you want your patent faster, fine. If you want it slower, fine. If you want it somewhere in between fine. This type of just in time delivery echoes what Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos described yesterday when speaking to the Center for American Progress when he said: “it is clearly time for the USPTO—our nation’s Innovation Agency—to adopt private sector business practices and offer market-driven services.”

Today when announcing the new Three-Track initiative, which is in proposal form at this time, Kappos said: “We recognize that the traditional ‘one-size-fits-all’ examination timing may not work for all applicants. By allowing applicants greater control over the timing of examination, the USPTO will be able to deploy its resources to better meet the needs of innovators. We look forward to input from the public as we shape this proposal.”

As someone who has advocated for many years a rethinking of the one-size-fits-all patent system I think this initiative makes a lot of sense and will definitely head the US patent system and the United States Patent Office in the right direction. Of course, the devil will be in the details, which I plan on thoroughly analyzing in the days and weeks to come.

According to the Patent Office, under the proposed Three-Track initiative, for applications filed first in the United States, an applicant may request:

• Track I: prioritized examination
• Track II: traditional examination under the current procedures
• Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.

Under Track I as proposed, applicants that request prioritized examination would be required to pay a fee set to recover the cost to the agency of maintaining the planned pendency of non-prioritized applications while expediting the examination of the prioritized application. The Patent Office says that input from the public most likely to use Track I will be useful in setting this fee, and will be considered.  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 12 months of prioritized status being granted.

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 agency receives a copy of the search report, if any, and first office action from the foreign office as well as 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, the applicant may 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.

It is the belief of the Patent Office that overall pendency would be decreased in four ways:

1. increased resources in Track I would result in increased output
2. reuse of search and examination work done by other offices would result in greater efficiency
3. applicants who chose Track III because their applications were of questionable value might ultimately not pursue their application examination
4. applicants with applications first filed abroad might ultimately not pursue their application examination

Public input is also requested on a proposal to provide for supplemental searches performed by other intellectual property granting offices at an applicant’s request.

A public meeting will be held on July 20, 2010 at 1:30 p.m. at the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia. Those interested in attending the meeting must register by 5:00 p.m. (EDT) July 16, 2010.

Written comments must be submitted by August 20, 2010.

Additional details on the program will be available tomorrow in the June 4, 2010 edition of the Federal Register.

For non-press inquiries, contact Robert A. Clarke, Deputy Director, Office of Patent Legal Administration by phone at (571)272-7735 or by e-mail, Robert.Clarke (at) uspto.gov.