On Friday, the PTO published notice of “Enhanced Examination Timing Control Initiative“. The notice provides further details on the PTO proposal on multi-track examination.
The PTO terms the three tracks as: I – Prioritized Examination; II – Traditional Timing; and III – applicant controlled up to 30 month queue prior to docketing.
For both Track I and Track II, the PTO will not docket an application that was first filed in a foreign country until it receives from the applicant: (1) a search report from that country; (2) an office action on the merits from that country; and (3) an appropriate reply to that office action. I understand the PTO’s point that it has been doing the vast majority of the world’s examination due to many countries having deferred examination and the US lacking such an option. This policy would set a dangerous precedent under the Paris Convention, however, in that it would encourage retaliation against US applicants who file in other countries. I don’t think this form of discrimination is the way to solve this problem.
An applicant may request to have its application placed on Track I at any time by paying the applicable fee, yet to be determined. The PTO is considering limiting Track I applications to 4 independent and 30 total claims, as well as publishing Track I applications shortly after being granted prioritization status (or 18 months from priority date, whichever is earlier). This would give the public early notice of such applications. The timing goals are a first office action within 4 months of the grant of prioritization and 12 months to final disposition. It is unclear when such a grant would take place with respect to the filing date of an application.
Track II would remain largely as examination is currently with the exception of the foreign origination discrimination set forth above.
Track III would permit the applicant to request up to 30 months to delay the application from being docketed for examination. Applications falling under Track III must be published within 18 months of the earliest priority date to prevent secret patents from being granted. While this would solve that problem, 35 U.S.C. § 122 seems to prohibit (“shall not”) publication of applications where the applicant certifies that they will not be filed in another country. This proposed rule may be contrary to the statute. Applicants would need to request examination of Track III applications within 30 months of filing or risk abandonment.
The PTO is still determining how to treat Patent Term Adjustment (PTA) under this three-tier system. One issue is that the PTO is proposing to offset any PTA accumulated in any foreign-originated application by the amount of time before the applicant files the required documents set forth above. Further, if the foreign-originated application is abandoned, the applicant must inform the PTO within 3 months or risk further PTA offset of the US application. When the applicant does inform the PTO, the US application will be treated as if it did not include a claim for priority to the foreign application.
The PTO then requested comment on 33 specific questions:
1. Should the USPTO proceed with any efforts to enhance applicant control of the timing of examination?
2. Are the three tracks above the most important tracks for innovators?
3. Taking into account possible efficiency concerns associated with providing too many examination tracks, should more than three tracks be provided?
4. Do you support the USPTO creating a single queue for examination of all applications accelerated or prioritized (e.g., any application granted special status or any prioritized application under this proposal)? This would place applications made special under the “green” technology initiative, the accelerated examination procedure and this proposal in a single queue. For this question assume that a harmonized track would permit the USPTO to provide more refined and up-to-date statistics on performance within this track. This would allow users to have a good estimate on when an application would be examined if the applicant requested prioritized examination.
5. Should an applicant who requested prioritized examination of an application prior to filing of a request for continued examination (RCE) be required to request prioritized examination and pay the required fee again on filing of an RCE? For this question assume that the fee for prioritized examination would need to be increased above the current RCE fee to make sure that sufficient resources are available to avoid pendency increases of the non-prioritized applications.
6. Should prioritized examination be available at any time during examination or appeal to the Board of Patent Appeals and Interferences (BPAI)?
7. Should the number of claims permitted in a prioritized application be limited? What should the limit be?
8. Should other requirements for use of the prioritized track be considered, such as limiting the use of extensions of time?
9. Should prioritized applications be published as patent application publications shortly after the request for prioritization is granted? How often would this option be chosen?
10. Should the USPTO provide an applicant-controlled up to 30-month queue prior to docketing for examination as an option for non-continuing applications? How often would this option be chosen?
11. Should eighteen-month patent application publication be required for any application in which the 30-month queue is requested?
12. Should the patent term adjustment (PTA) offset applied to applicant-requested delay be limited to the delay beyond the aggregate USPTO pendency to a first Office action on the merits?
13. Should the USPTO suspend prosecution of non-continuing, non-USPTO first-filed applications to await submission of the search report and first action on the merits by the foreign office and reply in USPTO format?
14. Should the PTA accrued during a suspension of prosecution to await the foreign action and reply be offset? If so, should that offset be linked to the period beyond average current backlogs to first Office action on the merits in the traditional queue?
15. Should a reply to the office of first filing office action, filed in the counterpart application filed at the USPTO as if it were a reply to a USPTO Office action, be required prior to USPTO examination of the counterpart application?
16. Should the requirement to delay USPTO examination pending the provision of a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action be limited to where the office of first filing has qualified as an International Searching Authority?
17. Should the requirement to provide a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action in the USPTO application be limited to where the USPTO application will be published as a patent application publication?
18. Should there be a concern that many applicants that currently file first in another office would file first at the USPTO to avoid the delay and requirements proposed by this notice? How often would this occur?
19. How often do applicants abandon foreign filed applications prior to an action on the merits in the foreign filed application when the foreign filed application is relied upon for foreign priority in a U.S. application? Would applicants expect to increase that number, if the three track proposal is adopted?
20. Should the national stage of an international application that designated more than the United States be treated as a USPTO first-filed application or a non-USPTO first-filed application, or should it be treated as a continuing application?
21. Should the USPTO offer supplemental searches by IPGOs as an optional service?
22. Should the USPTO facilitate the supplemental search system by receiving the request for supplemental search and fee and transmitting the application and fee to the IPGO? Should the USPTO merely provide criteria for the applicant to seek supplemental searches directly from the IPGO?
23. Would supplemental searches be more likely to be requested in certain technologies? If so, which ones and how often?
24. Which IPGO should be expected to be in high demand for providing the service, and by how much? Does this depend on technology?
25. Is there a range of fees that would be appropriate to charge for supplemental searches?
26. What level of quality should be expected? Should the USPTO enter into agreements that would require quality assurances of the work performed by the other IPGO?
27. Should the search be required to be conducted based on the U.S. prior art standards?
28. Should the scope of the search be recorded and transmitted?
29. What language should the search report be transmitted in?
30. Should the search report be required in a short period after filing, e.g., within six months of filing?
31. How best should access to the application be provided to the IPGO?
32. How should any inequitable conduct issues be minimized in providing this service?
33. Should the USPTO provide a time period for applicants to review and make any appropriate comments or amendments to their application after the supplemental search has been transmitted before preparing the first Office action on the merits?
The PTO will host a public meeting on this matter on July 20, 2010 and has requested public comments by August 20, 2010.
Comments on Questions
I’m not going to answer each question in detail, but I will make a few overall comments.
First, I think the PTO is taking a step in the right direction in proposing these examination tracks, assuming that it is able to meet the Track I goals and reduce overall pendency for Track II applications. Three tracks seems to be the right amount to give applicants sufficient control without making the system overly complicated.
RCE’s should not be limited for Track I applications. Payment of the prioritization fee once should be sufficient to keep an application on Track I.
The BPAI has its own backlog crisis. I’m not sure how allowing applicants to request prioritization during an appeal would effect the BPAI.
I don’t have a problem with limiting the number of claims in an application placed on Track I. If applicants need more claims, they can file additional applications, such as on Track II. I would permit 5 independent claims.
I’m not sure there’s a reason to limit extensions of time in Track I cases, so long as the PTO’s goals of 4 months and one year are adjusted accordingly. Then the applicants are only hurting themselves by delay.
I agree with the PTO’s publication proposals for Track I and III applications, but I’m not sure that it has the power to require publication under the current statute.
I don’t think the PTO should discriminate against foreign-originated applications. This will result in discrimination against US-based entities filing applications abroad at a time when we are trying to get many countries to enhance intellectual property protection.