On July 20, 2010, the USPTO hosted a public meeting on the proposed Enhanced Examination Timing Control Initiative, which would offer three tracks for examination while delaying examination of foreign-based applications. (Other blog articles discuss some drawbacks of this proposal and its particular impact on foreign-based applications.) The program began with opening remarks from Director Kappos, which were followed by brief presentations from representatives of Microsoft, AIPLA, AIPR, IPO, 3M, BIO and UIA. The speakers generally were receptive to the idea of giving applicants more options and control over the timing of examination, although each raised concerns about specific aspects of the proposed program.
Director Kappos’ Opening Remarks
Director Kappos shared his belief that innovation is the key to competitive advantage, and that intellectual property is the currency of innovation. He emphasized the importance of quality and timely decisions on patent applications, and acknowledged that the current examination backlog is a barrier to economic growth. Although the USPTO has offered some new options for prioritized examination (such as the Green Technology Pilot Program and the application exchange program), the magnitude of the backlog and length of application pendency demand more fundamental changes.
Director Kappos highlighted three aspects of the Enhanced Examination Timing Control Initiative:
- Providing a mechanism for the USPTO to examine the “most important” applications first.
- Giving applicants an opportunity to “switch lanes” to respond to changing circumstances.
- Promoting the USPTO’s work sharing goals.
Each speaker commended the USPTO for the new culture of transparency and ongoing dialog with stakeholders, and genuinely thanked Director Kappos for the opportunity to share their views on the proposal. Support for the proposal ranged from “strong” (Microsoft) to cautiously interested (AIPLA, IPO), with all speakers at least agreeing “in principle” to the idea of offering three tracks for examination.
The prioritized examination option received the most favorable comments, with the universal caveat that the USPTO be able to carry out prioritized examination without delaying examination of applications in the “traditional” examination queue (non-prioritized, non-delayed applications). Several speakers raised the problem of fee diversion, and the USPTO’s need to retain all of the fees it collects from applicants.
With regard to the fee for prioritized examination, while there was speculation that it would be in the range of “several thousand dollars,” the USPTO did not provide any specific information on the contemplated dollar amount. Some speakers urged that the fee be set high enough to act as a barrier to entry (lest the program be overwhelmed and undermined by its popularity), while others expressed concerns that it be set low enough to encourage use and not be prohibitive for small businesses and individual inventors.
Voluntary Delayed Examination
The voluntary delayed examination option received the most mixed comments, with some finding it attractive, and others questioning its advantages over current options for delaying examination (such as the PCT and 37 C.F.R. § 1.103, which provides a mechanism to suspend prosecution). On the other hand, it was pointed out that the proposed maximum 30 month delay hardly qualifies as “deferred” examination when other countries permit delay for 3, 5 or even 7 years.
Several speakers voiced concerns that voluntary delayed examination is contrary to public interest and negatively impacts third parties, such as by prolonging the uncertainty surrounding the subject matter that will be patented versus that which will be in the public domain. Some offered a solution to this problem—permitting third parties to request examination of a voluntarily delayed application.
Involuntary Delay of Foreign-Based Applications
The proposal to delay foreign-based applications until a substantive office action is issued by the priority patent office received the most uniformly negative comments. Several speakers raised practical questions, such as whether the foreign office action really would advance U.S. prosecution, given differences in laws and procedures, and whether the USPTO really wants to “import” foreign patent office backlogs into the USPTO examination system. Other speakers raised logistical problems, such as the (presumed) need to obtain a certified translation of the foreign office action and a legal interpretation of the issues raised by the foreign examiner. Still others raised strategic concerns, such as problems associated with a system that imposes consequences in the U.S. for decisions made in a foreign application.
Common themes from the comments on this topic include:
- Opposition to discrimination against foreign applicants.
- Fear of retaliatory measures in other patent offices.
- Concern that the proposal will promote gaming of the system.
- Doubt that waiting for a foreign office action and response will yield U.S. examination efficiencies.
- Difficulty in determining and applying appropriate Patent Term Adjustment consequences.
The speakers also offered new suggestions for the USPTO to consider, many of which reflect the thoughtful consideration that was given to the proposal, and the critical need to address the backlog problem.
- To allay some of the concerns surrounding the involuntary delay of foreign-based applications, it was suggested that the prioritized examination option be open to such applications at any time. (In the USPTO proposal, a foreign-based application only would be able to request prioritized examination after the foreign office action/response requirements are satisfied).
- Noting that the main purpose of the delay of foreign-based applications is to promote work sharing, it was suggested that the USPTO explore stronger use of PCT work product, such as adopting the EPO’s requirement that an EP national phase applicant respond to the Written Opinion if it was issued by the EPO as the International Searching Authority.
- As noted above, to allay some of the concerns surrounding the voluntary delay of examination, it was suggested that third parties be able to request examination of a voluntarily delayed application. It also was suggested that publishing a search report with voluntarily delayed applications could help the public assess the scope of patent protection that is likely to be obtained.
- Noting that one purpose of the voluntary delayed examination option is to encourage applicants to abandon unwanted applications prior to examination, it was suggested that the USPTO adopt a request for examination system for all applications, or offer a refund of search and examination fees if an application is abandoned prior to examination.
- Given the complexity of the proposed Enhanced Examination Timing Control Initiative and the likelihood of unintended consequences, several speakers suggested that the USPTO first test it out in a pilot program.
The speakers gave the USPTO a number of issues to consider, and Director Kappos assured the audience that all of the comments would be taken under consideration, together with submitted written comments, which are due by August 20, 2010. While many applicants rely on patent organizations and key industry players to provide comments, the best way to ensure that your specific concerns are raised is to participate in the process yourself.