The U.S. PTO has just proposed (press release) its most ambitious and comprehensive plan yet to reduce pendency and backlogs of patent applications. The plan involves giving applicants the choice of selecting between one of three tracks for examination:
- Track I: prioritized examination
- Track II: traditional examination
- Track III: delayed examination for up to 30 months
Priority Examination. Requesting prioritized examination will require, of course, payment of a fee, which is yet to be determiend. The PTO’s goal for prioritized application is to issue a first action the merits in 4 months, with final disposition occurring within 12 moths. The request and fee for prioritized applications can be paid at any time for first-filed applications. Otherwise, it can be requested only after receipt by the PTO of a copy of the search report, if any, and first action on the merits from the intellectual property office in which the relied-upon application was filed and an appropriate reply to that action in the application.
Delayed Examination. Delayed examination will allow the application to delay payment of the examination fee for up to 30 months. However, the application must be published and cannot be a continuation application. Track III is not available to applications claiming priority to do not claim priority to a foreign-filed application.
The PTO also wants to “harmonize” the examination procedures for various programs for making applications “special” (such as the recent “green technology” initiative” and other traditional bases for requesting special status, such as age or infringement) or accelerating the examination (such as the accelerated examination program, and the various patent prosecution high, or PPH, programs) for management and reporting purposes.
There some twists. All the details can be found in the Federal Register notice.
Will this improve things? More on that later.
No rules have been proposed. The PTO just wants feedback for the moment. You may voice your opinion in person at a public meeting on July 20 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. You may also submit written comments by August 20, 2010.
The PTO is specifically interested in comments on the following:
1. Should the USPTO proceed with any efforts to enhance applicant control of the timing of examination?
2. Are the three tracks above the most important tracks for innovators?
3. Taking into account possible efficiency concerns associated with providing too many examination tracks, should more than three tracks be provided?
4.Do you support the USPTO creating a single queue for examination of all applications accelerated or prioritized (e.g., any application granted special status or any prioritized application under this proposal)? This would place applications made special under the “green” technology initiative, the accelerated examination procedure and this proposal in a single queue. For this question assume that a harmonized track would permit the USPTO to provide more refined and up- to-date statistics on performance within this track. This would allow users to have a good estimate on when an application would be examined if the applicant requested prioritized examination.
5. Should an applicant who requested prioritized examination of an application prior to filing of a request for continued examination (RCE) be required to request prioritized examination and pay the required fee again on filing of an RCE? For this question assume that the fee for prioritized examination would need to be increased above the current RCE fee to make sure that sufficient resources are available to avoid pendency increases of the non-prioritized applications.
6. Should prioritized examination be available at any time during examination or appeal to the Board of Patent Appeals and Interferences (BPAI)?
7. Should the number of claims permitted in a prioritized application be limited? What should the limit be?
8. Should other requirements for use of the prioritized track be considered, such as limiting the use of extensions of time?
9. Should prioritized applications be published as patent application publications shortly after the request for prioritization is granted? How often would this option be chosen?
10. Should the USPTO provide an applicant-controlled up to 30-month queue prior to docketing for examination as an option for non- continuing applications? How often would this option be chosen?
11. Should eighteen-month patent application publication be required for any application in which the 30-month queue is requested?
12. Should the patent term adjustment (PTA) offset applied to applicant-requested delay be limited to the delay beyond the aggregate USPTO pendency to a first Office action on the merits?
13. Should the USPTO suspend prosecution of non-continuing, non- USPTO first-filed applications to await submission of the search report and first action on the merits by the foreign office and reply in USPTO format?
14. Should the PTA accrued during a suspension of prosecution to await the foreign action and reply be offset? If so, should that offset be linked to the period beyond average current backlogs to first Office action on the merits in the traditional queue?
15. Should a reply to the office of first filing office action, filed in the counterpart application filed at the USPTO as if it were a reply to a USPTO Office action, be required prior to USPTO examination of the counterpart application?
16. Should the requirement to delay USPTO examination pending the provision of a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action be limited to where the office of first filing has qualified as an International Searching Authority?
17. Should the requirement to provide a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action in the USPTO application be limited to where the USPTO application will be published as a patent application publication?
18. Should there be a concern that many applicants that currently file first in another office would file first at the USPTO to avoid the delay and requirements proposed by this notice? How often would this occur?
19. How often do applicants abandon foreign filed applications prior to an action on the merits in the foreign filed application when the foreign filed application is relied upon for foreign priority in a U.S. application? Would applicants expect to increase that number, if the three track proposal is adopted? 20. Should the national stage of an international application that designated more than the United States be treated as a USPTO first- filed application or a non-USPTO first-filed application, or should it be treated as a continuing application?
21. Should the USPTO offer supplemental searches by IPGOs as an optional service?
22. Should the USPTO facilitate the supplemental search system by receiving the request for supplemental search and fee and transmitting the application and fee to the IPGO? Should the USPTO merely provide criteria for the applicant to seek supplemental searches directly from the IPGO? 23. Would supplemental searches be more likely to be requested in certain technologies? If so, which ones and how often?
24. Which IPGO should be expected to be in high demand for providing the service, and by how much? Does this depend on technology?
25. Is there a range of fees that would be appropriate to charge for supplemental searches?
26. What level of quality should be expected? Should the USPTO enter into agreements that would require quality assurances of the work performed by the other IPGO?
27. Should the search be required to be conducted based on the U.S. prior art standards?
28. Should the scope of the search be recorded and transmitted?
29. What language should the search report be transmitted in?
30. Should the search report be required in a short period after filing, e.g., within six months of filing?
31. How best should access to the application be provided to the IPGO?
32. How should any inequitable conduct issues be minimized in providing this service?
33. Should the USPTO provide a time period for applicants to review and make any appropriate comments or amendments to their application after the supplemental search has been transmitted before preparing the first Office action on the merits?
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