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.
Next week (February 4, 2013) is the deadline for submitting comments in response to the USPTO’s request for feedback on Request for Continued Examination (RCE) practice. (This article provides more information on the request for feedback.) The USPTO’s treatment (or neglect) of RCEs will become even more frustrating after March 19, 2013, when the costs for filing RCEs will increase significantly. I urge stakeholders in the biotechnology and pharmaceutical industry–where RCEs are a normal step in the patent prosecution process–to make their voices heard and urge the USPTO to adopt policies and practices that ensure that Requests for Continued Examination are examined in a timely manner.Continue reading this entry
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
The USPTO has announced that it is launching its pilot program “to incentivize the distribution of patented technologies to address humanitarian needs.” As explained in the Federal Register Notice, “the pilot program will be run as an awards competition.” The program will be open to owners of granted patents and pending patent applications in four technology areas: Medical Technology, Food & Nutrition, Clean Technology, and Information Technology. Selected applicants will receive “a certificate redeemable to accelerate select matters before the USPTO” as well as public recognition, “including an award ceremony at the USPTO.” Program applications will be accepted from March 1, 2012, through August 31, 2012, or until 1,000 program applications are accepted. Up to 50 winners will be accepted.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
Last week, the USPTO issued two separate Federal Register Notices updating several of its special programs: the Patent Application Backlog Reduction Stimulus Plan, the Green Technology Pilot Program, and the Extended Missing Parts Pilot Program. 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.
As of September 26, 2011, applicants can seek fee-based prioritized examination under the USPTO’s Track I program. The September 23, 2011 Federal Register Notice sets forth the details of the program, which is largely identical to that previously set to take effect May 4, 2011, although the basic fee is higher. The USPTO decided not to implement the program in May because funding limitations required it to revise its hiring plans, and it did not believe that it could meet the Track I pendency goals with its current resources. While the USPTO’s funding situation has not improved, Track I is being offered now, in accordance with provisions of the Leahy-Smith America Invents Act.
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.
Last week, The Kojo Nnamdi Show on Washington, D.C. public radio station WAMU had two programs about patent reform. On Tuesday, there was a panel discussion on “Innovation and Patent Reform.” On Wednesday, Kojo talked with USPTO Director David Kappos about “Updating the U.S. Patent Office.” While I usually cringe when mainstream media discusses patent issues, I found these shows to be very good, even if I didn’t agree with everything that was said. One issue I would like to press Director Kappos about is his assertion that the pending patent reform legislation will help the USPTO solve the problem of the examination backlog.
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.
On April 4, 2011, the USPTO issued a Notice in the Federal Register announcing the implementation of fee-based prioritized examination, also known as “Track I” of its three tracks of examination options proposed in June of 2010. Track I will be available for non-reissue applications filed on or after May 4, 2011. While this program may be attractive to applicants seeking prompt examination, some of the details warrant a closer look.
Now that the Senate is set to vote on the Patent Reform Act of 2011 this week, the mainstream media is weighing in on the issues. This Saturday, The Washington Post published an editorial in support of patent reform, (“Why The patent process should be overhauled,” Feb. 26, 2011) but it butchered the background facts so thoroughly that it did more to confuse the issues than enlighten the public. I sincerely hope that Senators are better informed when they place their votes this week.
The USPTO has issued a proposed rulemaking supporting its plans to implement “Track I” of the three track examination program announced last year. According to the announcement, the USPTO is still considering public comments on other aspects of the program, but wants to move forward with Track I because “the vast majority of public input was supportive.”Continue reading this entry
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 announced that starting January 24, 2011, the Patent Proecution Highway between the USPTO and Australia will expand to include positive patentability determinations made under the PCT. While the details of the this PCT program have not yet been promulgated, I assume they will be similar to those in place for the current PCT-PPH programs.
Patent Prosecution Highways – Express Lanes To Examination
As I explained in my first detailed article on PPH programs, each PPH offers “fast tracked” examination in a “second” patent office (Office of Second Filing, OSF) for claims that have been determined to be patentable by a “first” patent office (Office of First Filing, OFF).
For the non-PCT (direct) PPH programs, the OFF is the Patent Office of the priority application country. If there is no priority application, the OFF can be the first Patent Office to issue a favorable patentability ruling. But, if the priority application was filed in one country (such as France) and a favorable patentability ruling is first received from another patent office (such as Australia), it is not possible to use the favorable ruling to fast-track examination in the U.S.
The USPTO has PPH agreements with fourteen patent offices:
Australia, Austria, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Russia, Singapore, Spain, and United Kingdom
The existing PCT-PPH programs are somewhat less restrictive, and do not base eligibility on the presence or absence of a specific priority claim:
[A]n applicant receiving a written opinion or an international preliminary examination report from [a participating patent office] or the USPTO that at least one claim in a PCT application has novelty, inventive step, and industrial applicability may request that the other office fast track the examination of corresponding claims in corresponding applications.
With the new Australian PCT-PPH program, the USPTO will have PCT-PPH agreements with eight patent offices:
Australia, Austria, Europe, Finland, Japan, Korea, Russia, and Spain.
Advantages of the PCT-PPH Programs
The PCT-PPH programs offer several advantages over the direct PPH programs.
First, the PCT-PPH programs do not have the restrictive priority requirements that apply to the other PPH programs. These requirements exclude a number of applications that otherwise might have been able to benefit, and prevent the USPTO from reusing the work of another patent office simply because it is not the office of the application’s priority country.
Second, the PCT-PPH programs may be available earlier in an application’s lifetime, because a PCT written opinion or international preliminary examination report is likely to be issued before a patent office makes a patentability determination. In such cases, an applicant may be able to use the PPH to avoid months or years of waiting for examination.
Third, although the PPH programs still are based on bilateral agreements, PCT-PPH programs may exist between multiple patent offices. That means that a favorable patentability finding from the EPO PCT searching/examination authority could be used to fast-track examination in multiple countries, such as the U.S., Japan, and Korea.
Disadvantages of the PCT-PPH Programs
The PPH programs require the applicant to amend the claims to correspond to those determined to be patentable by the OSF. In the context of PCT-PPH programs, this means that only claims found to be patentable initially (in the written opinion), or after only one response (in the international preliminary examination report) can be presented in a PCT-PPH application. While other claims could be pursued in a continuation or divisional application, applicants may not want to bear the expense of prosecuting and maintaining separate applications and patents.
Should You Take The Highway?
While I still am not convinced that the PPH programs will achieve the USPTO’s goals of improving the quality and efficiency of patent examination and reducing the USPTO’s workload, I do think that it is something that applicants should consider when they receive an indication of patentability in an OFF or PCT written opinion or international preliminary examination report. With the average wait to a first office action from the USPTO still hovering at 24 months, many applicants are interested in knowing about all possible strategies for obtaining examination sooner rather than later.
The Patent Office of Argentina recently announced a temporary program which permits applications to swap places in the examination queue, such that a later-filed application can be examined sooner by taking the place of an earlier-filed application. Unlike a similar U.S. program, the Argentine program does not appear to require abandonment of the earlier application.
The Argentine Swapping Program
The Argentine program is governed by Resolution No. P-399, which is designed to permit applicants to accelerate examination of their most important applications.
In order to be eligible for this program, both applications must:
- be owned by the same entity
- be classified in the same subclass of the International Patent Classification system
- have been published
- have their substantive examination fees paid.
Requests to participate in this program must be filed by April 30, 2011.
Applicants who may be interested in this program should coordinate with their U.S. and Argentine patent counsel to determine if they have qualified applications.
The U.S. “Dump One, Bump One” Program
The Argentine program is quite different from the USPTO’s “Project Exchange” program (also referred to as “Dump One, Bump One”), which requires applicants to abandon the earlier-filed application in order to obtain prioritized examination of a later-filed one.
To participate in the U.S. program:
- both applications must have been filed before October 1, 2009.
- both applications must have been owned by the same party on October 1, 2009, or have at least one overlapping inventor.
- the applicant must file an express letter of abandonment in the application to be abandoned before a first Office Action is issued. The letter must include a statement that “the applicant has not and will not file an application that claims the benefit of the expressly abandoned application.”
This temporary program has been extended to December 31, 2011.
Applications in the USPTO’s Project Exchange Pilot Program will be placed on an examiner’s special docket prior to the first Office action, and will have special status in any Board appeal and in the patent publication process. However, applications will be placed on the examiner’s amended docket, not the special docket, after the first Office Action.
The USPTO program requires abandonment of the earlier-filed application because it has dual goals. Although it shares the Argentine goal of giving applicants “greater control over the priority with which their applications are examined,” it also is designed to “stimulat[e] a reduction of the backlog of unexamined patent applications pending before the USPTO.”
Applicants who are not willing to abandon an earlier U.S. application can consider whether other options for prioritizing U.S. examination are available.
As of August 25, 2010, the USPTO has entered into Patent Prosecution Highway (PPH) agreements with twelve countries. While USPTO press releases tout these programs as “cooperative initiatives that streamline the patent system and promote expeditious, inexpensive and high-quality patent protection throughout the world,” their benefits for the U.S. patent system as a whole, and U.S. applicants in particular, remain to be proven.
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.