The American Intellectual Property Law Association (AIPLA) and the Intellectual Property Owners Association (IPO) have provided comments on the PTO’s proposed three-tier examination system. While both organizations generally support the ability of applicants to control examination timing, they raise several serious concerns about the proposal.
AIPLA
The Proposal calls for U.S. applications that claim priority to a foreign application to be precluded from entering the examination queue until an office action and an appropriate response to the action as to why the claims are patentable under U.S. law has been filed in the foreign patent office. AIPLA suggests that the USPTO does not have the authority to implement such a discriminatory regime. The organization believes it will lead to discrimination of U.S. applicants by foreign patent offices, which would harm U.S. businesses and the U.S. economy.
AIPLA also questions the sense of submitting arguments to a foreign patent office as to why claims would be patentable under U.S. law when the laws and patentability standards of the two countries are likely to be different. The claims are also likely to be different due to translation and practices before the foreign patent office.
The mandatory delay may lead more applicants to file first in the U.S., which would increase U.S. filings and not decrease the PTO workload.
AIPLA supports the Track I prioritized examination proposal based on paying cost-covering fees. The organization does question whether a refund will be forthcoming if the PTO does not meet the examination goals of 4 months to a first Office Action and 12 months to final disposition.
AIPLA is also concerned that Track I may divert resources from Track II examination and cause further delay for applications examined in the normal course. Small and micro-entities have concerns that the PTO does not have statutory authority to implement a fee reduction for Track I. Thus, Track I would be primarily used by large entities causing small entities to be at a disadvantage.
AIPLA encourages the PTO to permit more than 4 independent and 20 total claims for Track I applications. Perhaps a higher fee could be charged for applications with more claims. Futher, extensions of time and RCEs should not be limited for these applications.
AIPLA has traditionally opposed deferred examination such as set for in Track III. Requiring publication of all Track III applications at 18 months addresses one concern. AIPLA is skeptical of the benefits to the PTO workload of deferred examination because it does not believe there are any statistics to bear out the benefit of abandonments prior to examination.
AIPLA is concerned that delays in examination will cause uncertainty for third parties as to whether a published application is patentable. At least under the PCT, a search report is obtained earlier to add certainty to the issue. The organization questions whether third parties could initiate examination of an application by filing the requisite fee with the PTO.
AIPLA agrees that applications with deferred examination should have any patent term adjustment (PTA) offset. It argues, however, that the PTO needs to clarify these issues, as they are currently too uncertain. There should be no discrimination against foreign applicants because this will lead to foreign discrimination against U.S. applicants.
IPO
IPO is concerned that Congress will divert fees collected by the PTO to meet the Track I goals. IPO is also concerned that discrimination against foreign-based applications will violate international treaties to which the U.S. is a party and will lead to discrimination against U.S. applicants by foreign patent offices.
IPO also has concerns about whether prioritized examination will further delay examination of traditional Track II applications and whether refunds will be available if the PTO does not meet the Track I goals.
IPO generally opposes deferred examination because it delays the public’s knowledge of whether an application is patentable. This can chill competition and harm the U.S. economy. IPO encourages the PTO to instead implement a refund procedure to refund search and examination fees if an application is expressly abandoned prior to examination.
IPO has similar concerns to AIPLA regarding foreign-originated applications. The system could be gamed by many applicants who would file first in the U.S. if they wanted faster examination and first in foreign countries if they preferred slower examination. Any reduction in the U.S. examination queue would be temporary until foreign patent offices begin examining applications. This would put them right back in the U.S. queue, unless it is expected that many will be abandoned based on the foreign office’s action. Alternatively, fewer foreign applicants may file U.S. applications, which would reduce PTO revenue.
IPO opposes any automatic deferral of foreign-based applications without awarding corresponding PTA. PTA should not be reduced for any event outside of the applicant’s control.
Conclusion
Thus, both influential intellectual property organizations generally agree with the PTO’s overall goal of giving applicant’s more control over examination timing, but they oppose many of the proposed features of the Three Track system. They also have a large number of questions as to how the system would be implemented.
