USPTO News Briefs

    By Donald Zuhn --

USPTO Announces Postponement of Track 1 Examination (Again)

On April 21, USPTO Director David Kappos sent a message to Patent Office employees, notifying them that "[t]he Track One expedited patent examination program, scheduled to go into effect on May 4, 2011, is postponed until further notice."  Last Friday, the Intellectual Property Owners Association (IPO) made the text of that message available.  Director Kappos also addressed the postponement of the Track One (or prioritized examination) program on his Director's Forum blog on Friday.  Today, the USPTO issued a press release again announcing that the Track One program has been postponed.  According to the release, the program, which was scheduled to go into effect on May 4, has been postponed "until further notice due to reduced spending authority in the Full-Year Continuing Appropriations Act, 2011."  The Office noted that "[w]ithout the resources to hire a sufficient number of examiners to implement Track One, we must postpone the effective date of the program until we are in a position to implement it successfully while ensuring there will be no adverse impact on non-prioritized examination applications."  The release states that a new start date for the program will be announced "as soon as circumstances permit," and that the Office will provide the new date "via a Federal Register notice."

USPTO Extends Patent Prosecution Highway Pilot Program with DPMA

Last week, USPTO Director David Kappos authorized an extension of the Patent Prosecution Highway (PPH) pilot program with the German Patent and Trade Mark Office (DPMA) that was begun on April 27, 2009 (see "USPTO Begins Pilot Program with the German Patent Office").  The PPH pilot permits an applicant having an application whose claims have been allowed in the DPMA to fast track the examination of an application in the USPTO, or vice versa, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from the USPTO (or the DPMA) that at least one claim in an application is patentable may request that the DPMA (or USPTO) fast track the examination of corresponding claims in the corresponding application in that office.  According to a notice regarding the extension of the USPTO-DPMA PPH, both offices have agreed to continue the pilot program for an additional two years to April 26, 2013, at which time it will be determined whether and how the program should be fully implemented.

The USPTO has established PPH programs with fifteen Offices.  Currently the USPTO has PPH programs (full or pilot) in place with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), IP Australia (IP AU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the Intellectual Property Office of Singapore (IPOS), the German Patent and Trade Mark Office (DPMA), the National Board of Patents and Registration of Finland (NBPR), the Hungarian Patent Office (HPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), and the Mexican Institute of Industrial Property (IMPI).

USPTO Updates Registration Exam

Earlier this month, the USPTO announced that it would be updating its registration examination as of April 12, 2011.  The updated exam will be based on the Manual of Patent Examining Procedure (M.P.E.P.) Edition 8, Revision 8, as well as the following materials:

• Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex (75 Fed. Reg. 53643)
(see "USPTO Updates Obviousness Examination Guidelines")

• New Interim Patent Subject Matter Eligibility Examination Instructions (August 24, 2009 Memorandum)

• Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (75 Fed. Reg. 43922)

• Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (July 27, 2010 Memorandum)

• Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications (76 Fed. Reg. 7162)
(see "USPTO Promulgates Guidelines for Applying 35 U.S.C. § 112, 2nd Paragraph").

Comments

[Skeptical]

I am skeptical of the proffered rationale of:

"[w]ithout the resources to hire a sufficient number of examiners to implement Track One, we must postpone the effective date of the program until we are in a position to implement it successfully while ensuring there will be no adverse impact on non-prioritized examination applications."

There is no way that staffing (hiring and training) of any appreciable number of new examiners could have taken place with UNLIMTED funding between the announcement of the program and the (now delayed) start of the program.

To offer this now as a reason is insulting.

[6]

Actually Skeptical it is my understanding that they had to curtail hiring by about 500 examiners they were planning to hire. There is no shortage of applicants for the job so far as I'm aware.

[Skeptical]

6,

The point is not whether the Office was going to hire - the point is that the TIMING would have been impossible, even given unlimited funds.

[6]

" the point is that the TIMING would have been impossible,"

I'm not sure how you magicked that up from some forsaken abyss within your brain but, newsflash, if they hire 500 new examiners more than they did then those 500 new examiners can all be doing a lot of "fast track" apps or be doing slow track apps and free up primaries to do the fast trackers.

Oh and btw, they were PLANNING to hire a lot more people far in advance of the notice about the program they put out awhile back.

It is simply stunning how oddly your mind works.

[patent litigation]

It's utterly shameful that the patent office has had to suspend implementation of the Track One program. The initiative could go far to increase much-needed revenue for the woefully-underfunded agency, bite into its crushing backlog, help innovators get their inventions to market, and, as a result, reduce U.S. unemployment. And now that rumors predict the death of yet another patent reform bill, it looks like USPTO staff will have to go back to the drawing board in finding sufficient revenue to operate properly. What a disgrace.
http://www.generalpatent.com/media/videos/general-patent-gets-results-its-clients

[Skeptical]

6,

"Oh and btw, they were PLANNING to hire a lot more people far in advance of the notice about the program they put out awhile back."

I will leave the invective aside and simply ask:

How many of that planned number had been ACTUALLY hired prior to the announcement that the fast track plan was postponed?

What was the time frame between initial announcement (when suppossedly the hiring would start) and teh point wherein the program was postponed?

The answer to those two questions will give you a rate of hiring (not a rate of someone specifically trained for fast track - and by the way, the announcements were NOT hiring to backfill, but hiring SPECIFICALLY for the program - kindly leave the goal posts as they were).

Next, apply that rate to the amount of time between the announcement and when the progam was supposed to start.

What level of gap do you come up with?

As I said, the annoucement is insulting.