USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative

    By Donald Zuhn --

In a press conference held earlier this month, U.S. Patent and Trademark Office Director David Kappos presented a proposal for a new patent examination initiative -- the "Three-Track" program -- for which the Office has begun seeking comment (see "USPTO Director Announces New Examination Options").  Following the press conference, the Office published a notice in the Federal Register (75 Fed. Reg. 31763) providing additional details concerning the Three-Track program, or Enhanced Examination Timing Control Initiative.

According to the notice, the Three-Track program will apply to U.S. applications that do not claim the benefit of a foreign-filed application under 35 U.S.C. § 119(a)-(d).  For such applications, applicants will be able to (1) request "prioritized examination" (Track I examination), (2) request a delay of up to 30 months in the docketing of a non-continuing application (Track III examination), or (3) make neither of these requests and receive the current application processing (Track II examination).

The notice indicates that under the initiative, a request for Track I examination will be permitted at any time in a USPTO first-filed application (and in U.S. applications claiming the benefit of a foreign-filed application as specified below).  The Office notes that the fee for Track I examination "would be set at a level to provide the resources necessary to increase the work output of the USPTO so that the aggregate pendency of nonprioritized applications would not increase due to work being done on the prioritized application."  According to the notice, statutory changes would be needed before the Office could provide a discounted fee for Track I examination to small entities.  The notice also indicates that Track I examination may involve claim limits (4 independent claims and 30 total claims) and early publication of applications (i.e., shortly after a request for Track I examination is granted).  For Track I examination, the Office has set a goal of providing a first Office action on the merits within four months and a final disposition within twelve months of the grant of a Track I request.

Requests for Track III examination may be made at the time the application is filed or in a reply to a notice of missing parts.  Applications in Track III will still be published 18 months from the earliest priority date.  For applications granted Track III status, applicants will be required to request examination and pay the examination fee with the surcharge "within thirty months of the actual filing date of the application or any relied-upon provisional application (i.e., to which benefit is claimed under 35 U.S.C. 119(e))."  Under the Three-Track program, failure to make such a request would result in abandonment of the application.  However, the notice indicates that the request for examination, examination fee, and surcharge could be submitted early with an additional request that the application not be examined until a specified date (that is no later than the 30-month period specified above).  The Office notes that it is considering a rule that "would offset any positive PTA accrued in a Track III application when applicant requests that the application be examined after the aggregate average period to issue a first Office action on the merits."  For example, where the aggregate average period to issue a first Office action is 20 months and an applicant requests examination at 30 months, the PTA for that application would be reduced by 10 months.

Under the Three-Track program, U.S. applications claiming the benefit of a foreign-filed application would be held until the USPTO receives a search report (to the extent one is issued) and a first office action from the foreign office in which the application was filed as well as an "appropriate reply" to the foreign office action.  After the USPTO receives the search report, foreign office action, and appropriate reply, applicants prosecuting such applications will be permitted to request Track I examination.  According to the notice, where the foreign office action contains one or more rejections, an "appropriate reply" for submission with the U.S. application would "include arguments regarding why the claims in the USPTO-filed application were allowable over the evidence relied upon in the foreign office action."  As with Track III applications, the Office is considering a rule "to offset positive PTA accrued in the application when applicant files the required documents [i.e., search report, foreign office action, and appropriate reply] after the aggregate average period to issue a first Office action on the merits."

The notice indicates that the Three-Track proposal would increase the efficiency of the examination of U.S. applications claiming the benefit of a foreign-filed application by avoiding or reducing duplication of efforts by the office of first filing and the USPTO.  The Office also notes that "major patent filing jurisdictions like the Japanese and European patent office have already adopted office-driven systems in which they address first the applications for which they are the office of first filing."  Among the specific questions the Office seeks comment on, are whether the requirement to submit a search report, foreign office action, and appropriate reply (1) should be limited to first filings at offices that have qualified as international searching authorities under PCT Article 16, and (2) should be limited to applications that are published.  The Office also seeks comment as to whether the above procedures will result in a larger number of applications being filed first in the USPTO rather than in an applicant's national office.

The Office is soliciting comment regarding the proposed Three-Track program.  Additional specific questions for which the Office seeks comment (including 33 numbered questions on pages 31767-68) are presented in the Federal Register notice.  Written comments, which must be submitted by August 20, 2010, can be sent by e-mail to [email protected] or by regular mail to Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Robert A. Clarke.  The Office has also announced that a public meeting regarding the Three-Track program will be held on July 20, 2010 at 1:30 pm (EST) in the USPTO South Auditorium of Madison West, 600 Dulany Street, Alexandria, VA 22314.  Those wishing to attend the meeting must register by 5 pm (EST) on July 16, 2010 (additional information regarding registration can be found on page 31678 of the notice).  In addition, those wishing to make an oral presentation at the meeting must register by sending an e-mail to [email protected] by 5 pm (EST) on July 13, 2010.  A webcast of the meeting will also be available (Patent Docs will provide details regarding the webcast in a subsequent post).

Comments

[Gena777]

Great to see Director Kappos understands that different patent applications should be treated differently -- implementing this concept could contribute to increased efficiency at the USPTO. Though I'm not yet convinced that fast/ordinary/delayed is the ideal system for categorizing patent applications, at least it's a step in the right direction. I believe that the USPTO needs to start reviewing several different types of multi-tiered approaches to patent examination, because the traditional one-size-fits-all approach doesn't meet the needs of today's environment. If Congress ever actually passes a patent reform bill with teeth, then maybe we'll see significant change for the better in patent law someday.
http://www.washingtontimes.com/news/2010/may/25/patent-reform-misses-the-mark/