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USPTO Seeks Input on Proposed Patent Application Changes

The United States Patent and Trademark Office (USPTO) is taking steps to increase efficiency and applicant input into how certain patent applications are processed by the Patent Office. The PTO announced in the Federal Register of June 4, 2010 that it will hold a public meeting to solicit public opinions on an initiative being considered by the USPTO to designed to provide applicants with greater control over when their applications are examined and to enhance work sharing between U.S. and foreign intellectual property offices.The public meeting will be held on July 20, 2010, beginning at 1:30 p.m. (Anyone interested in attending the meeting must register by July 16, 2010). Written comments must be submitted by August 20, 2010 via email to 3Trackscomments@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Robert A. Clarke.

How will the USPTO's Examination Initiative be Implemented? Under the initiative, a patent applicant can choose, for any patent application first filed in the USPTO, one of three tracks for examination of the application.

Track I is a new prioritized examination track, which may a patent applicant may be requested at any time during prosecution upon payment of an additional fee, to be determined. This track would provide a first Office Action on the merits within four months and a final disposition within twelve months. The USPTO is considering limiting the number of claims in a prioritized application to four independent and thirty total claims. As a condition for this status, the PTO is considering requiring early publication of prioritized applications.

Track II is the standard examination track currently used, except that Track I examination can be requested at anytime during prosecution under this Track. If neither Track I nor Track III examination is requested, Track II will apply.

Track III allows the patent applicant to delay examination of the application up to 30 months from its earliest US priority date. The applicant can request either Track I or Track II examination at any time during this period upon payment of an examination fee and a surcharge. One benefit of this track is that the applicant can delay examination fee, which must currently be paid upon filing of the non-provisional US application. Should the applicant decide during this period not to pursue the invention, the application can be abandoned without the applicant being responsible for the examination fee. To avoid delays in notice to the public, any application proceeding along this track will be published 18 months after its earliest US priority date.

• Half of current U.S. patent applications claim priority to foreign patent applications, including applications. Under the proposed initiative, these applications will be treated differently than applications first filed in the USPTO, to avoid or reduce duplication of efforts between the USPTO and foreign patent offices. Once the requisite foreign documents are obtained by the USPTO, the applicant can request examination according to any of the three tracks.
• In the case of a PCT application, the international search report and the first written opinion or the international preliminary examination report (whichever is issued) and the applicants reply would be the requisite documents.
• Since the proposed rules could affect the patent term Adjustment Act computations the USPTO proposes to offset any such effects in various ways.
• Finally, the The USPTO proposes to negotiate with certain foreign patent offices an optional service for applicants to request that the USPTO obtain a supplemental prior art search from the foreign patent offices. This is presumably to strengthen the validity of any US Patent issued from the application. Since the service is optional, there would likely be a fee for it, which is yet to be determined.

Ask Questions
The USPTO posted the thirty-three questions for comment in the Federal Register. However, comments outside of these questions will also be considered. All comments become part of the public record, so confidential information should not be included in the comments.

Contact Preti Flaherty's IP Group
Please contact Patent attorneys Wayne Keown or Patrick Scanlon of our Portland office if you have any questions.welcome your questions. Please contact them at wkeown@preti.com or pscanlon@preti.com or at 207.791.3000.