USPTO to Host Roundtable on Three-Track Patent Proposal

By Gene Quinn
July 17, 2010

USPTO Headquarters, Alexandria, VA

The United States Patent and Trademark Office (USPTO) will be holding a public roundtable discussion on its proposed Enhanced Examination Timing Control Initiative, also known as “Three-Track,” currently under consideration by the USPTO. The purpose of the roundtable meeting is to solicit opinions from the public on the proposed initiative. The meeting will be held on Tuesday, July 20, 2010, from 1:30 p.m. to 5:30 p.m. at the USPTO headquarters in the Madison Building Auditorium, which is located at 600 Dulany Street, Alexandria, VA, 22314. The meeting will also be webcast. Web cast information is available on the USPTO’s website by visiting http://www.uspto.gov/patents/announce/3track.jsp.

The proposed ”Three-Track” initiative would provide applicants greater control over when their applications are examined and promote greater efficiency in the patent examination process. The proposal is designed to provide applicants with the timing of examination they need and to reduce pendency of patent applications.

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.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos and USPTO Commissioner for Patents Bob Stoll will be attending the Roundtable event. Members of the intellectual property community, as well as members of the general public are invited to attend. Limited seating is available on a first come, first served basis. Media who wish to attend the event must RSVP to Lolita Best at Lolita.Best@uspto.gov. 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@uspto.gov.

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 8 Comments comments.

  1. inventor0875 July 17, 2010 3:47 pm

    Proposal: Enhancing Fast Examination with an Applicant option to Schedule Patent Issue.
    Scenario: Innovation in need of Funding.
    The Patent Office would provide a fast “notice of allowance” along with an Applicant option to schedule patent issue (public disclosure/notice) for up to at least 18 months (from filing).
    For example, an Applicant receives a “notice of allowance” in 3 months on a nice set of broad and backup claims. Applicant could then “sell” investors by having known claims (value & lower risk) along with 15 months of stealth/first-mover advantage (lower risks and greater potential reward). This combination would help start-ups to obtain/increase funding and succeed in bringing the innovation to market as first-mover.

  2. Stan E. Delo July 18, 2010 1:16 pm

    Hello Gene,
    Generally I tend to like the Three-Track approach, as it would allow
    applicants to delay things if needed by using the 3rd track. The 30 month
    time line would tie in nicely if the applicant were approaching the USPTO
    filing after starting with a PCT application primarily. However, I don’t
    like the requirement to have the applications published at 18 months. It
    Might be Sorta OK if it is not required to give up the right to request
    non-publication up front and irrevocably. That way the applicant could opt
    out of publication before 18 months if things seemed to be indicating it
    was prudent to put the application on a faster track.

    Personally I have always thought that the current practice of requiring
    publication if the applicant wants to file abroad to be woefully damaging to
    the applicants’ ability to profit from their inventions, as the rest of the
    world will be able to knock off the invention nearly a year and a half
    before the applicant is even awarded a patent by the USPTO. It seems to me
    as if the USPTO should be required to keep applications confidential until
    they are awarded a Patent, so that in the event of an eventual rejection,
    the applicant can go back and try again, without having all of their
    previous work being given away for free to the rest of the world. Instant
    prior art at 18 months, which might cause the inventors themselves to create
    Their Own prior art which could ironically be used to disallow a newer
    improved application based upon their own past R&D efforts in some cases. I
    recently heard from a patent agent that the reason my PTO searching was
    going so slowly was probably because some Asian countries were
    bulk-downloading applications to use in their own R&D efforts, as the PTO
    currently allows it happen. What ever happened to fairness for American
    citizens and inventors and allowing them to access what they have mostly
    paid for with their filing and maintenance fees? I would like to see
    18-month publication go away entirely here in the US, but it will literally
    require an act of Congress to make that happen.

    On the other end of the spectrum in the Track One approach, the Publication
    issue becomes somewhat moot, IF, and this is a big if to way of thinking,
    they can actually issue patents in less than 18 months. As Mr. Kappos points
    out, he will need Congressional action to be able to reduce fees for small
    and micro entities, which in my opinion would be a Huge boost for said
    entities. Perhaps some at higher levels forget at times that many times
    inventors are developing things out of their own pockets and on a
    shoestring, which makes it very difficult for them to be able afford to even
    file an application at all. I can’t help but wonder how many future new
    breakthroughs like Penicillin, Sonar, or MRI’s will never see the light of
    day because the risk/reward barrier is too high to take a chance on
    investing in them.

    I very much look forward to viewing the hearing, and wish I could be there.

    Stan E. Delo

    ——————————————————————————–

    No virus found in this incoming message.
    Checked by AVG – http://www.avg.com
    Version: 9.0.830 / Virus Database: 271.1.1/3004 – Release Date

  3. Paul F. Morgan July 18, 2010 1:17 pm

    I think that this 3-tier examination system is a good idea, whether or not it significantly reduces the backlog by increasing abandonments. To my mind that is not nearly as publicly important as the ability this system would provide to chose a faster track tier 1 examination [with a fee [and possibly a prior art search] but without the dangerous and costly currently required petition allegations] for those needing faster patenting for small entity licensing and obtaining venture capital funding to commercialize inventions now stuck in years of backlog delays. The latter has been considered the most important direct economic value of patents. Plus, the ability to alternatively chose regular tier 2 or slower tier 3 examinations to provide more time to polish claims to cover one’s final commercial products, especially for pharmaceutical and other technologies often needing post-initial-filing testing, product optimization, research for other effective related species to provide 112 generic claim support, etc. All without having to file and pay for numerous continuations or RCE’s. These client-tailored advantages are all independent of overall backlog reduction questions.
    This system may not significantly reduce the overall PTO backlog unless a significant percentage of tier 3 applications are abandoned before their deferred examinations. However, it could also provide that if tier 3 applications would have a sufficiently high examination fee for large entities to make decision-avoidance-prone corporate foreign and U.S. managers (and universities) to make genuine “pay or abandon” decisions before the end of their examination deferment period. Meanwhile, all, especially small, inventors would optionally have more time to seek licensees before having to pay any examination fees. Furthermore, the proposed tier 3 deferment period is not much of any longer than current examination deferments from using provisionals, and, especially, PCT, in many key technologies.
    It seems quite hypocritical that so much of the opposition to any kind of U.S. deferred examination comes from those extensively using deferred examinations in Japan and elsewhere and/or extensively delaying their U.S. examinations via maximum PCT delay opportunities, provisional filings, serial continuations, and greatly delayed filing of divisional applications for claims restricted out years before. Furthermore, as to those alleging that any deferred examination will make product right to use or infringement studies more difficult without seeing final claims sooner, most new products are now launched without such studies, as evidenced by the very few patent suits these days that are on patents the defendants even knew about before they were sued, other than in the pharmaceutical industry and a few others. The patents companies should be most concerned about will logically be the ones that will be fully issued faster by request under tier 1, and thus have final claims to review much sooner than under the current backlogs.
    Last but not least, the USPTO does not enforce examinations of applications in proper original (true) filing date order now anyway, as can be seen from their continued inexcusably delayed issuances of “submarine” patents, etc.

  4. Paul F. Morgan July 18, 2010 1:29 pm

    Re: above comment that: “the current practice of requiring [18 month U.S. ]
    publication if the applicant wants to file abroad to be woefully damaging to
    the applicants’ ability to profit from their inventions..” ?

    If one is filing abroad, that application is going to be published in 18 months by either WIPO/PCT and/or the designated foreign country anyway, and in most cases available for on-line searching by anyone. Furthermore, the U.S. publication gives the U.S. inventor an additional [102(e) date] advantage against others.

  5. Stan E. Delo July 18, 2010 1:54 pm

    First of all, sorry about accidentally including the virus check message at the end, as I copied my message from a letter I sent to a group that will be attending the roundtable, that were seeking input from their membership.

    Paul F. Morgan…

    If independents like myself are reasonably certain through the expedient of doing very thorough market research, the increased fees for the fast track would be gladly paid by me at least. Often being able get the best licensing deal possible or even possible at all at any royalty rate hinges upon having a granted Patent in hand, as opposed to just having a “Patent Pending”

    As it is now, a potential licensee can just decline to license the invention, and wait for the 18-month publication, which can be readily found since they would then probably know the inventor’s name. They could then *see* the technology, and start trying to design their way around the application in the more than a year before the patent issues to the inventor that tried to license the technology to them. Probably more the exception than the rule, but if the invention seems to be a cutting edge type of invention, they will be sorely tempted. Indeed, most times potential licensees don’t even want to look at it, because they are probably in the same field, and they might be on nearly the same track in their internal R&D efforts, and want to avoid any conflicts of interest when they finally file an application themselves.

    BTW Gene… I Really like the e-mail notice feature, which should really help to stimulate some interesting discussions in the future.

    Stan E. Delo

  6. Stan E. Delo July 18, 2010 2:05 pm

    Roger that Paul, and I was unaware of the 102(e) advantage.

  7. Paul F. Morgan July 18, 2010 3:51 pm

    There is also now 35 USC 135(b)(2) protection (from others claiming your invention with copied or obviously similar claims) triggered from your 18 month application publication.

  8. IANAE July 19, 2010 9:24 am

    As it is now, a potential licensee can just decline to license the invention, and wait for the 18-month publication, which can be readily found since they would then probably know the inventor’s name. They could then *see* the technology, and start trying to design their way around the application in the more than a year before the patent issues to the inventor that tried to license the technology to them.

    That’s not a bug, it’s a feature.

    The patentee’s competitors should be encouraged (though not by the patentee himself, obviously) to design around the technology, because (1) it promotes further innovation in the “useful arts”, (2) they are avoiding the infringement of someone else’s rights, which is always a good thing, and (3) the patentee should be crafting his disclosure and claims to make design-arounds impractical, and on your facts he still has time to do so.