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PTO Proposes Major New Patent Application Processing Rules


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: June 3, 2010 @ 10:52 am
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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.

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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.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

11 comments
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  1. Gene -
    I proposed a system very much like this one in a law review article from 2005 (http://www.law.fsu.edu/journals/lawreview/downloads/331/osenga.pdf). It will be interesting to see where this proposal goes.
    Best, Kristen Osenga

  2. Kristen-

    Thanks for bringing this to our attention. I will be sure to take a look.

    -Gene

  3. “applicants who chose Track III because their applications were of questionable value . . . ”

    A quick thought: Could a Track III election thereby provide legal ammunition to a later patent challenge that such a filer therefore knew at the time of filing that they had a “questionable” invention/patent?

  4. Steve M-

    I can’t imagine that could be the case. Patentably speaking, if it works at all (even crudely) and is novel and nonobvious then it is entitled to a patent. The question most often isn’t whether you can get a patent, but whether the patent you can get is worth the time and expense associated given the overall importance of the invention to the business model.

    There really are already make-shift Track III. You just keep the application pending with continuation after continuation. The difference being that the Patent Office has to go through the motions with Office Actions and expends time. So it would seem that Track III will allow for self imposed delay without any use of USPTO resources.

    -Gene

  5. Heck.

    What a great idea !!!!!

    Let’s do the same thing with US government elections.

    Those who can pay, get to queue up on the fast track voting machine line.

    Those who can’t are understood to inherently have “volunteered” to wait on the long line to nowhere.

    Separate but almost equal. An idea whose time has come! Love it.

  6. Thanks Gene; that makes sense.

    Would choosing Track III mean no or reduced PTA? If reduced, by how much? Maybe the same as the applicant-elected delay?

    From what I’m reading so far, this seems like an excellent idea. Even as a “lowly” pro se, I’d be willing to pay another 1k or so for faster action on any apps I was in a hurry for an answer on.

  7. The problem I see is that whether one wants to take a fast track or a slow track is very technology dependent. For those technologies where it’ll take some time to mature in order to get a large pool of possible infringers (ahem … licensees) to adopt the technology, then you’ll want to slow things down. However, where the technology matures quickly and leaves quickly, you’ll want to speed things.

    The problem is that, in many instances, the type of technology will term whether you want to slows things down or speed things up. Thus, certain art units will be dealing with lots of fast-track applications (and few slow-track applications) and other art units will be dealing with lots of slow-track applications (and few fast-track applications). By the nature of examining (in which you want your Examiners to get really good at one particular technology), it’ll be difficult to shift examining resources from one art unit to the next. As such, I don’t see this providing as much benefit as one might think.

  8. Steve-

    First, no such thing as a lowly pro se. You do what you have to do, just be careful.

    Excellent question about patent term extension. We will have to wait and see. The rules will be out tomorrow, but will likely take days and weeks to really digest.

    Another though, while in some cases an inventor may want to speed up under sone circumstances you might want to slow up if you need more time to test the market/investor waters.

    -Gene

    Sent from iPhone

  9. In its broad outline form, I don’t see how this really changes what is currently done. There is already a procedure for Tier III (slowed applications) called deferred examination set forth in 37 CFR 1.103(d). Tier II is just the normal examination procedure. There is also a procedure for Tier 1 called accelerated examination set forth in MPEP 708.02(a). Unless the requirements for Tier 1 and Tier III change dramatically, this isn’t really a big change and won’t have much effect on the backlog. I also agree that to a large extent the decision to slow down or speed up an application is largely technology dependent so some art units will have lots of fast apps and others will have lots of slow apps. However, if this happens, I suppose the PTO could then hire more examiners for the fast app art units to try and move resources to those art units.

  10. Either the USPTO mutli-track proposal or Osenga’s multi-tier proposal would be a big improvement over the status quo. Combining elements of both with a few thoughts of my own:

    Tier/Track 1: Higher fees, immediate publication and active solicitation of prior art through the “peer-to-patent” model, more timely/thorough examination, full 20-yr term (higher maintenance fees may help induce owner to voluntarily cut term short if patent has outlived its usefulness).

    Tier/Track 2: Same as current utility patent. Can upgrade to Track 1 by paying additional/higher fees.

    Tier/Track 3: Lower fees, applicant-controlled delay, publication after favorable cursory initial examination and preliminary opinion based on IDS references only, unenforceable. Can upgrade to Track 2 or 1 by paying additional/higher fees.

  11. P.S. I also agree with Osenga’s proposal to upgrade from Track/Tier3 to Track/Tier2 upon a reexam.