Moving Patent Applications Through the USPTO: Options for Applicants

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1 Moving Patent Applications Through the USPTO: Options for Applicants Navy T2 ORTA/Legal Workshop June 28, 2011 Kathleen Kahler Fonda Senior Legal Advisor, Office of Patent Legal Administration United States Patent and Trademark Office

2 Improving Applicant Resources New initiatives that help move applications through the patent prosecution system: Enhanced Examination Timing Control Three Track Green Tech pilot program Project Exchange 2

3 Current Acceleration Practices 3

4 Current Acceleration Practices Accelerated Examination Program Green Technology Program Project Exchange Petition to make special for age or health An overview of these programs is available at: omp_chart_dom_accel.pdf 4

5 Accelerated Examination Program 5

6 Accelerated Examination: Overview Goal is to complete examination of an application within 12 months from the filing date of the application. Applications are placed on an accelerated examination track throughout the entire prosecution in the USPTO. An applicant may have an application granted accelerated examination status under the Accelerated Examination Program provided certain requirements are met and a petition to make special under 37 CFR is filed. Requirements apply to all petitions to make special, except those related to: Age and Health Patent Prosecution Highway Green Technology Pilot Project Exchange 6

7 Accelerated Examination: Requirements Key requirements include the following: (1) the application must be filed via EFS-Web with a petition to make special (USPTO Form PTO/SB/28); (2) the required petition fee or a statement that the claimed invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism; (3) the application must be complete and in condition for examination; (4) the application must contain three or fewer independent and twenty or fewer total claims, and must not contain any multiple dependent claims; (5) the claims must be directed to a single invention; (6) the petition must include a statement agreeing to have an interview; (7) applicant must provide a statement that a pre-examination search was conducted that meets certain requirements; and (8) applicant must provide a complete accelerated examination support document that satisfies certain requirements. See MPEP (a). 7

8 Accelerated-Examination Program: Statistics as of January 2011 Statistics on petitions: Granted Dismissed/Denied 1433 Pending 228 Average time to decide 1.93 months Statistics on First actions: Rejection 1497 (or 54.5%) Ex Parte Quayle 6 (or 0.2%) Allowance 1090 (or 39.7%) Average time from decision 1.69 months Statistics on final dispositions (per AE notice): Allowance 1560 Abandonment 100 Final Rejection 863 Average time to issue: 11.2 months from filing, 7.48 months from decision for patents issued in FY

9 Green Technology Pilot Program 9

10 Green Technology Pilot: Overview The Green Technology Pilot Program permits applicants to request accelerated treatment for applications pertaining to clean technologies, such as environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reductions. Applications will be placed on an accelerated examination track in the following situations: (1) prior to the first communication on merits, i.e., first Office action; (2) any appeal to the Board of Patent Appeals and Interferences; and (3) the patent publication process. 10

11 Green Technology Pilot: Program Requirements Key requirements include the following: (1) the application must contain three or fewer independent claims and twenty or fewer total claims, and must not contain any multiple dependent claims; (2) the claims must be directed to a single invention that materially enhances the quality of the environment; or materially contributes to: (a) the discovery or development of renewable energy resources; (b) the more efficient utilization and conservation of energy resources; or (c) greenhouse gas emission reduction; (3) the petition to make special must state the basis for the special status (e.g., the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic lifesustaining natural elements); (4) the petition must include a statement explaining how the materiality standard is met if it is not clear on its face from the application disclosure; 11

12 Green Technology Pilot: Program Requirements (cont d) Key requirements (cont d): (5) the materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment; (6) the petition must be filed via EFS-Web; (7) the petition must be accompanied by a request for early publication (if not already published); and (8) the petition must be accompanied by the publication fee. 12

13 Green Technology Pilot: Program Requirements (cont d) The petition must be filed at least one day prior to the date that a first Office action (which may be an Office action containing only a restriction requirement) appears in the Patent Application Information Retrieval (PAIR) system. An initial classification requirement was removed on May 21, 2010, allowing more inventions related to green technologies to qualify. A filing date requirement was removed on November 10, Extended to December 31, 2011 or 3000 petitions have been granted, whichever is earlier. For more information: 13

14 Green Technology: Statistics as of May 30, 2011 Statistics on petitions: Granted Dismissed/Denied 1101/223 Pending 285 Average time to petition decision - 25 days Average time to first action after petition grant - 55 days Total patents 328 Average time to issue -20 months 14

15 Project Exchange 15

16 Project Exchange: Overview Applicant may have an application accorded special status for examination by expressly abandoning another unexamined application. Procedure allows applicants having multiple applications currently pending before the USPTO to have greater control over the priority with which their applications are examined. Reduces the backlog of unexamined patent applications pending before the USPTO. Applications will be placed on an accelerated track in the following situations: (1) prior to the first communication on merits, i.e., first Office action; (2) any appeal to the Board of Patent Appeals and Interferences; and (3) the patent publication process. Scheduled to end: December 31, 2011 or 10,000 petitions have been granted, whichever occurs first. 16

17 Project Exchange: Requirements In order to receive accelerated treatment, applicants must file a petition to make special. Some of the key requirements include the following: (1) the non-provisional application for which accelerated status is sought must be filed before October 1, 2009; (2) the applicant has another co-pending non-provisional application that has an actual filing date earlier than October 1, 2009, and is complete; (3) the application for which accelerated status is sought and the other co-pending application either are owned by the same party as of October 1, 2009, or name at least one inventor in common; (4) the applicant files a letter of express abandonment in the copending application before it has been taken up for examination; 17

18 Key requirements (cont d) Project Exchange: Requirements (cont d) (5) applicant submits a statement that no application that claims the benefit of the expressly abandoned application has been filed or will be filed; (6) applicant submits a statement agreeing not to request a refund of any fees paid in the expressly abandoned application; (7) applicant submits a statement that no application that claims the same invention claimed in the expressly abandoned application has been filed or will be filed; and (8) applicant submits a statement certifying that petitions requesting special status under this program have not been filed in more than fourteen other applications. The small-entity status requirement was removed on June 24, 2010 to increase participation in the Program. For more information: 18

19 Project Exchange Statistics as of May 30, 2011 Statistics on petitions: Granted Denied 38 Pending 4 Average time to petition decision - 20 days Average time to first action after petition grant months Average time to issue - 8 months from petition grant 19

20 Petition to Make Special 20

21 Petition to make special (age or health): Overview Applications may be accorded accelerated examination status based on an applicant s age or health. Applications with granted petitions are placed on an accelerated examination track throughout the entire prosecution at the USPTO. Key requirements include a petition to make special with accompanying evidence showing: the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor's certificate or other medical certificate, or that the applicant is 65 years of age or older. 21

22 Petition to make special (age or health): FY 2010 Statistics Statistics on petitions (filed in FY 2010): Granted 2247 (745 granted electronically after filing electronically using USPTO format) Dismissed/Denied 59 Pending 161 Average time to petition decision: 67.8 days if non-electronic 45.9 days on average including electronic Total first actions in FY 2010 after a decision to grant status 1825 Average time to first action in FY 2010 after petition grant months Total patents in FY 2010 in which petition granted 1,029 Average time to issue for patents granted in FY 2010: months from filing months from petition grant 22

23 Enhanced Examination Timing Control 23

24 Enhanced Examination Timing Control Three-track Track I go fast Track II default, current process Track III go slow 24

25 3-Track Examination: Current Goals Provide framework to give applicants more control on timing of examination; Promote, but not mandate, work sharing with other Offices; Eliminate or reduce work that applicants currently do not want the USPTO to perform; and Promote, but not mandate, requests for search reports. 25

26 3-Track Examination: Major Benefits Promotes expedited patenting and commercial exploitation of the most promising technologies for applicants. Increases efficiency where the USPTO is the Office of Second Filing (OSF) and applicants opt to delay examination while awaiting the search and/or examination results of the Office of First Filing (OFF). Allows USPTO to focus examination resources and efforts on applications that are more important to applicants. Allows applicants to prioritize applications for examination. 26

27 3-Track Examination: Summary Any applicant may (but will not be required to) request: Track I: Prioritized examination for a fee OR Track III: A delay of up to 30-months after the earliest claimed priority date (PCT-like) Track II (the default track): Applicants who do not select Track I or Track III 27

28 Enhanced Examination Timing Control: Public Meeting and Comments Publication of request for comments and notice of July 20, 2010 public meeting: June 4, 2010 (75 FR 31763). Comment period closed August 20, 2010; 53 comments received Notice of Proposed Rule Making for Track I published February 4, 2011 (76 FR 6369) Final rule published April 4, 2011 (76 FR 18399); effective date delayed until further notice April 29, 2011 (76 FR 23876) 28

29 Prioritized Examination: Track I Implementation USPTO proposed to implement Track I separately from Track III to move forward with Track I as quickly as possible. Ability to request a delay in docketing of an application for examination and payment of certain fees (Track III) is still under consideration. USPTO proposed to limit the annual number of Track I applications to 10,000 for the first year and revisit the annual cap at the end of the year. 29

30 Prioritized Examination: Track I Basics Track I provides options for innovators to receive an early indication of patentability and, if appropriate, a patent much faster than traditional timelines. The aggregate goal for handling Track I applications would be to provide a final disposition within 12 months of prioritized status being granted. Other existing prioritization programs and pilots will not be changed by implementation of Track I. 30

31 Prioritized Examination: Track I Goal The final disposition for the 12-month goal includes occurrence of any of the following: Mailing of a notice of allowance Mailing of a final Office action Filing of a notice of appeal Declaration of an interference by the Board of Patent Appeals and Interferences Filing of a request for continued examination (RCE) Abandonment of the application 31

32 Prioritized Examination: Track I Fee The prioritized examination fee has been set at $4000 in order to recover the full cost of the resources necessary to increase the work output of the USPTO, so that non-prioritized applications will not be delayed due to diversion of resources for processing and examination of the prioritized applications. Current fee setting authority does not permit USPTO to discount for small entity applicants. 32

33 Prioritized Examination: Track I Requirements A request for prioritized examination requires the following: Application must be an original utility or plant nonprovisional application filed under 35 USC 111(a) via EFS-Web; Application must be complete under 37 CFR 1.51(b), with any fees due under 37 CFR 1.16 paid on filing; The request for prioritized examination must be present on filing and be accompanied by the prioritized examination fee, a processing fee, and the publication fee; and Application must contain no more than 4 independent claims and 30 total claims and no multiple dependent claims. 33

34 Prioritized Examination: Track I Time Periods The time periods set in Office actions for applications in Track I is the same as set forth in MPEP (b). If, however, applicant files a request under 37 CFR 1.136(a) for an extension of time to file a reply, prioritized examination of the application will be terminated. 34

35 Track III Track III: Basics Applicant can request a delay in docketing the application for examination by filing a request for delay in payment of the examination fee and the surcharge for a maximum period not to exceed thirty months. Allows applicants to make informed decisions about whether to prosecute an application. 35

36 Track III Basics PCT timing requested Allows applicants to make informed decisions about whether to prosecute an application (e.g., what claims to pursue, locate investors to fund the innovation). All applications in this Track must be published at 18 months. Upon expiration of the 30-month period from the earliest relied upon filing date, applicants must (1) affirmatively request examination (similar to an international application), and (2) pay any of the fees that were deferred. Thereafter the application is treated as a Track II application, but for purposes of queuing to the examiner as one that was filed when examination was requested. 36

37 Track II Track II: Basics Prioritization or PCT timing does not need to be requested. Track II is the default track. The pendency of Track II will be used for planning and reporting. 37

38 Questions? By phone: Office of Patent Legal Administration help line By Thank you! 38

39 FY 2010 Statistics 39

40 FY 2010 Highlights Filings up 4% over projection Production Examiner Production Goals - 104% Granted over 233,000 patents Total allowances over 240,000 27,000 cases worked off the backlog during the fourth quarter 40

41 FY 2010 Highlights - continued Quality Final Disposition Compliance Rate 96.3% In-process Compliance Rate 94.9% Affirmed and Affirmed-in-part represents 63% of the total Board dispositions 41

42 Backlog Cases 42

43 First Action Pendency and Total Pendency FY 2009 FY Total Pendency Target (34.8 Months) 2010 First Action Pendency Target (25.4 Months) 43

44 Average Allowance Rate FY 2009 FY 2010 (biweekly average) 44

45 Quality Measures Percent FY 2005 FY 2010 (rolling 12-month average) Target % Target % 09/05 03/06 09/06 03/07 09/07 03/08 09/08 03/09 09/09 02/10 04/10 06/10 08/10 Allowance/Final Compliance Rate Non-Final In-Process Compliance Rate 45

46 Current (UPR) Utility Plant Reissue Backlog Backlog Tail 46

47 Patents Dashboard 47