In a Federal Register Notice published on May 17, 2013, the USPTO announced After Final Consideration Pilot Program 2.0 (AFCP 2.0) as part of its ongoing efforts to “reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application.” The program is set to commence May 19, 2013 (yesterday!), and will run run through September 30, 2013. Continue reading this entry
The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more prompt examination after a Request for Examination (RCE) is filed. However, because that the backlog of RCEs awaiting examination has climbed to over 110,000, it could be some time before applicants notice an appreciable difference in RCE processing times.
The USPTO is seeking public comments on Request for Continued Examination (RCE) practice. In particular, the USPTO is “soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE.” The USPTO tends to have a negative view of RCEs, so this is an important opportunity to explain how and why RCEs can be a legitimate step in the patent examination process, and how certain USPTO examination practices can contribute to the need for an RCE. The USPTO will consider written comments received by February 4, 2013.Continue reading this entry
Memorial Day Weekend takes on special meaning in the Washington, D.C. area. New flags are placed on the gravesites at Arlington National Cemetery, Rolling Thunder comes to town to remind us of soldiers who are prisoners of war or missing in action, and families and friends honor their loved ones who served this country, visiting the Vietnam War Memorial, Korean War Memorial and World War II Memorial. Memorial Day Weekend also marks the unofficial start of summer, when neighborhood pools open and families head to the beach. After my visit to the Patent Office last week, I wonder if Director Kappos will be hitting the Mount Vernon Trail for a bike ride.Continue reading this entry
As I was cleaning up my office a few weeks ago, I came across a December 2009 article I wrote with my colleague Steve Reid for BNA’s Patent, Trademark & Copyright Journal, entitled “New Patent Office Examination Procedures: Bane or Boon?” The article discusses the then-new changes to the USPTO’s internal procedures for examining applications after a Request for Continued Examination (RCE) has been filed. We predicted that the changes “could introduce significant delays in prosecution,” and the statistics recently reported on Patently-O confirm that we were right. The problem is growing and reaching a crisis—I have RCE applications that have been waiting over a year for examination. How do we hold the USPTO accountable for the growing RCE backlog?Continue reading this entry
On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed patent fees. Even taking the USPTO’s cost estimates at face value, I have several questions and concerns about some of the proposed fees. Continue reading this entry
In today’s Federal Register Notice, the USPTO announces the expansion of its Track I program for fee-based expedited examination to include Requests for Continued Examination (RCEs). While this may be good news on a practical level, it exacts a high price to obtain prompt review of an application that already is midstream in the examination process. The change takes effect immediately, and applies to RCEs filed before, on, or after December 19, 2011.Continue reading this entry
I was co-chair of last week’s IPO PTO Day conference, and it was a great event. The program included several speakers from the USPTO, including Commissioner for Patents Bob Stoll, Deputy Commissioner for Patents Peggy Focarino, Chief Administrative Patent Judge James Smith, Vice Chief Administrative Patent Judge James Moore, and Administrative Patent Judge Michael Tierney. Director Kappos gave the luncheon address. Here are some interesting tidbits of the information that they shared.
Despite statistics on the USPTO’s Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer. When I telephone examiners to check on the status of my applicaitons, they are sympathetic but note that they have a long “special new” docket and are focusing on even older applications under the USPTO’s COPA (Clearing Oldest Patent Applications) program. For a few extreme cases I have used the USPTO Ombudsman program to see if the Ombudsmen have any ideas.
The USPTO has been touting recent data indicating that it continues to make progress in reducing the backlog of new patent applications awaiting examination. At the same time, the number of applications awaiting examination after a Requests for Continued Examination (RCE) has ballooned. I am frustrated by the USPTO’s attitude towards RCEs, and its willingness to relegate them to examination purgatory. Permitting applications to languish midstream in prosecution is inefficient, and drags down innovation, investment and commercialization just as much as delaying examination of new applications.
In a press release issued July 1, 2011, the USPTO announced pilot changes to the Patent Prosecution Highway (PPH) that will make the PPH much more widely available, and hence much more useful, to many applicants. Most welcome is the change that will permit PPH filings based on an indication of allowability from any participating patent office, not just the patent office of the priority country.
The latest post on “Director’s Forum,” the public blog of USPTO Director Kappos, is a guest post by Bob Stoll, the Commissioner for Patents, announcing the release of March 2011 data on the USPTO’s Patents Dashboard. Now that we are half way through the current fiscal year, I am glad to see that the USPTO appears to be making at least incremental progress in some areas. However, I am still bothered by some of the data.
In a recent blog post, Director Kappos wrote about USPTO efforts to improve its performance as a PCT Receiving Office (RO), International Searching Authority (ISA), and International Preliminary Examining Authority (IPEA). The USPTO has improved some statistical measures of its performance, such as different processing times, but still falls short on the timeliness and quality of Search Reports and Written Opinions. While Director Kappos promises more oversight of the contractors who perform these tasks, it seems like the obvious solution to many of the problems would be to return the PCT search and examination functions to U.S. examiners.
The USPTO has finally made an official announcement of its plans to open a satellite office in Detroit, Michigan. The USPTO hopes to open its "first ever" satellite office in early 2011. As set forth in the press release, "[t]he new office is expected to create more than 100 new jobs in its first year and provide a boost to the region’s innovation economy."
Last week the USPTO announced a new peer-to-patent pilot program that will include patent applications in the fields of biotechnology, bioinformatics, telecommunications, and speech recognition, in addition to the software and business methods applications that were included in the original pilot program. The USPTO touts the promise of a stronger patent and offers the incentive of prioritized examination, but applicants should understand the program details before volunteering their own applications for “peer review.”
When Director Kappos wrote on his blog about international worksharing programs, he also provided a summary of current options for prioritized U.S. examination. While most are well-known, it is good to keep all options in mind when prompt examination is important, such as when a commercial product is on the market (or will be within the average 3-5 year pendency time) or infringement is suspected.
As I wrote earlier this week, Director Kappos is championing international worksharing as a key mechanism for addressing the growing workload facing patent offices around the world. To make worksharing work, the Office of First Filing (OFF) has to examine the application first. This means that patent offices participating in international worksharing programs will be encouraged to give priority to applications for which they are the OFF—usually applications filed by domestic applicants, with no priority claim or a priority claim to a domestic provisional application.
During his first year as Director of the USPTO, David Kappos has championed international worksharing as a key mechanism for addressing the growing workload—and backlog—facing patent offices around the world. Patent Prosecution Highway programs were the first international worksharing initiatives, and a recent announcement on Kappos’ blog indicates that more programs are on the horizon.
Patent Prosecution Highway (PPH) Programs
Each PPH program is based on the same basic principle:
[A]n applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF.
Since I first wrote about PPH programs a few weeks ago, new programs have been announced with Austria and Spain. The USPTO now has PPH agreements with the following fourteen patent offices:
Australia, Austria, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Russia, Singapore, Spain, United Kingdom
The PCT-PPH program also has expanded, and the USPTO now has PCT-PPH agreements with Austria, Russia and Spain in addition to Europe, Japan and Korea.
PPH programs permit an applicant to expedite examination in one country after the “OFF” (usually the priority country) has determined that at least some of the claims are patentable. To gain entry into a PPH program, the applicant usually must limit the PPH application to the claims that were determined to be patentable by the OFF.
Because of stringent priority, timing and claim requirements, the PPH programs have limited applicability and usefulness. Still, Director Kappos announced at a September 23, 2010 press conference at the WIPO General Assemblies Meetings in Geneva that the USPTO has processed nearly 4,000 PPH applications.
Next Up: SHARE and FLASH
In addition to the applicant-initiated PPH programs, Director Kappos is promoting office-initiated programs such as the Strategic Handling of Applications for Rapid Examination (SHARE) and First Look Application Sharing (FLASH) programs. A one-year SHARE/FLASH pilot program is planned to start this month (October 2010) and will involve about 100 applications per month.
What is SHARE?
Under SHARE, a patent office will “focus examination efforts” on applications for which it is the OFF, so that other offices can benefit from the OFF’s search and examination results.
In some USPTO outlines of how SHARE might work, a non-OFF patent office (an Office of Second Filing, or OSF) could delay examination until at least preliminary search and examination results are available from the OFF. When the USPTO included this concept in its proposed Enhanced Examination Timing Control Initiative, it was soundly criticized by myself and others. It is my understanding that the USPTO plans to withdraw or modify this aspect of its proposed “three track examination” system, but still may adopt a “default rule” for foreign-origin applications that would delay examination until the OFF issues a substantive examination report, unless the applicant requests accelerated examination.
What is FLASH?
FLASH appears to be an internal program that will help the USPTO effectuate its SHARE obligations when it is the OFF. As summarized by the USPTO, FLASH will be initiated when a U.S. applicant files in Europe or Japan, and requests a copy of the U.S. priority document through the existing Priority Document Exchange (PDX) system.
The PDX request will trigger the USPTO to expedite its search and examination of the U.S. application, and the U.S. examiner will be expected to act on the case within three months. The USPTO will notify the EPO and/or JPO when examination has commenced, and will make the results available through the USPTO’s Public Patent Application Information Retrieval (PAIR) system.
The overall goal for SHARE and FLASH is to have U.S. search and examination results within 18-22 months from the U.S. filing date, to facilitate examination in other countries. This is somewhat depressing when you realize that this means that 18-22 months will be the new target for a first Office Action in applications that the USPTO is giving prioritized treatment to meet its own goals.
Will SHARE Result in Examination Efficiencies?
The SHARE program is based on the premise that having search and examination results from the OFF will facilitate examination in the OSFs. However, examination efficiencies will be realized only if :
- The OFF raises issues that are relevant under OSF patent laws.
Many countries differ on what qualifies as prior art, and on the standards for obviousness, enablement, and written description. These differences will limit the ability of an OSF to leverage the work of the OFF.
- The OSF can expend less effort on its own search and examination.
We know that U.S. examiners still will conduct a search and examination in accordance with U.S. requirements and apply U.S. laws, rules and MPEP guidance. This will limit the efficiency gains from having access to the OFF search and examination report.
SHARE may be most effective at identifying novelty-destroying prior art, but applicants already give the USPTO prior art identified in foreign search reports and office actions, to ensure compliance with the duty of disclosure. When a PCT application is filed in parallel to a U.S. application, the U.S. examiner very well may have PCT search results prior to examination even when the USPTO is the OFF. And, while most other countries do not have a duty of disclosure, many examiners in other patent offices already follow a practice of checking PAIR (and other patent office websites) for search and examination reports from other offices, regardless of which office is OFF and which is OSF. (The EPO is launching a new program that will require submission of the OFF search results, if available.) Thus, it is not clear that this complicated program of delaying and synchronizing examination will give examiners information that they don’t already have on hand or at their disposal.
Will SHARE Help Applicants?
Some will say that all applicants will benefit if SHARE is successful at reducing global patent office workloads, but how will SHARE affect a given application?
For a first-filed U.S. application to benefit from SHARE, the applicant also would have to file in the EPO and/or JPO and make a PDX request. Most U.S. applicants enter the EPO and/or JPO via PCT filings, about 30 months after the U.S. priority date. If the U.S. and PCT applications claim priority to a U.S. provisional application, the EPO and JP applications will be filed about 18 months after the U.S. application. If the PDX request is made promptly and the three month examination goal is met, the U.S. application will receive an Office Action about 21 months after filing, which is in accordance with the USPTO’s SHARE/FLASH goals. This amounts to a five month shortcut over the USPTO’s current average time to first Office Action.
The benefit to foreign-origin U.S. applications is murkier. Presumably the EPO and JPO will have programs similar to SHARE and FLASH when they are the OFF, but the USPTO has not announced how it will leverage those search and examination results for U.S. applications. Some applications may be candidates for a PPH program, but will the USPTO expedite prosecution of other applications when EPO and JPO search and examination results are available?
Then there is the impact on U.S. applications that do not qualify for these or other accelerated examination programs. Unless the USPTO really is able to increase overall productivity, prioritized examination of SHARE applications necessarily will translate to further delayed examination of other applications. This may have a particular impact on independent inventors, small businesses and universities who have more limited budgets for pursuing foreign applications.
Making Sure Worksharing Works
Because SHARE and FLASH are internal, USPTO-initiated programs, it may be difficult to obtain information on program operations and results. I hope that the USPTO publishes data throughout the pilot program, and lets us know how it plans to measure its success. Prompt examination reports from the OFF is just the first step. Unless OFF examination reports lead to increased productivity in OSFs (such as through reduced examination time for OSF applications), SHARE may only complicate global patent protection.
On September 20, 2010, the USPTO issued a “Request for Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System.” The proposal under consideration would offer a “fast-track ex parte reexamination voucher” designed to incentivize technologies “that address humanitarian needs.” At times like these I wish I had more “inside” information so I could understand the forces behind this proposal, but perhaps some of my readers can enlighten me.
Last week the USPTO unveiled its new “Data Visualization Center” which provides patent application pendency, backlog and examination data in a graphic “dashboard” format. While not as fancy, the Board of Appeals and Interferences also has published graphic data on its workload, with monthly statistics from May 2010 to August 2010. The Board’s data show that its backlog continues to grow at a tremendous rate, while its overall reversal rate for the current fiscal year (which ends at the end of September) is about 29%.
The USPTO is proposing significant changes to the application queuing system to give applicants greater control over the examination process and promote the USPTO’s worksharing goals. The new system would offer three examination tracks: “prioritized,” “traditional,” and “delayed.” While domestic applicants could opt into any of these tracks, applications that claim priority to a foreign application would be completely derailed until the foreign patent office issues a substantive examination report. I understand that the Patent Office has to do something to address the examination backlog, but the kinks in the tracks make this proposal a train wreck waiting to happen.
The Promise of a High-Speed Prioritized Examination Train . . .
The USPTO lures us on to this high-speed train with the promise of prioritized examination without the burdens associated with accelerated examination or the strict requirements of the patent prosecution highway (PPH). Prioritized applications would receive a first office action within four months and a “final disposition” within twelve months. To get on board this high-speed train, applicants will have to pay a “cost recovery fee” to cover the costs of providing the necessary “resources” to meet these goals without further delaying examination of non-prioritized applications.
. . . at What Price?