PTO Rules I & II Rulemaking and Quality Initiatives Prosecution Related Actions & Tips PLI S 11 th Annual Patent Law Institute April 27-28, 2017 Brian E. Hanlon (USPTO Director, OPLA) Robert J. Spar (Retired Former Director of OPLA)
OVERVIEW: PTO Rules I & II Rulemaking and Quality Initiatives Proposed Rulemaking for Duty to Disclose Information Patent Fee Proposal Enhanced Patent Quality Initiatives (EPQI) Prosecution Related Actions & Tips AIA Tips Understanding the ADS/Correcting or Updating it Best Practices for Prosecution/Patent Application Initiatives Petitions Information FY 2017 Quarter 1 Statistics 2
Proposed Rulemaking for Duty to Disclose Information
37 C.F.R. 1.56 Duty to Disclose Information 2016 Notice of Proposed Rulemaking (NPRM) NPRM issued on Oct. 28, 2016 (81 FR 74987) Proposes to harmonize the materiality standard for the duty of disclosure before the USPTO with the but-for materiality standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) for establishing inequitable conduct before the courts Proposes to explicitly incorporate affirmative egregious misconduct 4
37 C.F.R. 1.56 Duty to Disclose Information 2016 Notice of Proposed Rulemaking (NPRM) Public comments were due on December 27, 2016 Fourteen comments were received Comments were from two intellectual property organizations, one law firm, three companies, and eight individuals Comments are posted at https://www.uspto.gov/patent/lawsand-regulations/comments-public/comments-revision-dutydisclose-information-patent The USPTO is currently evaluating the comments to determine its next steps 5
37 C.F.R. 1.56 Duty to Disclose Information Current Materiality Standard Under the current 1.56, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and: (1) it establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim, or (2) it refutes, or is inconsistent with, a position the applicant takes in: Opposing an argument of unpatentability relied upon by the Office, or Asserting an argument of patentability. Under current 1.56, materiality is evaluated under the preponderance of evidence burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification 6
37 C.F.R. 1.56 Duty to Disclose Information But-For" Materiality Standard The NPRM proposes to replace the current prima facie case of unpatentability materiality standard for the duty of disclosure in 1.56 with the but-for materiality standard set forth in Therasense The NPRM defines "but-for" materiality as "the Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable interpretation consistent with the specification Materiality would continue to be evaluated applying the preponderance of evidence standard and giving the claim its broadest reasonable construction consistent with the specification 7
37 C.F.R. 1.56 Duty to Disclose Information Proposed Amendments to 37 C.F.R. 1.56 37 CFR 1.56(a) to recite that the materiality standard for the duty of disclosure is but-for materiality 37 CFR 1.56(b) to define the but-for materiality standard as set forth in Therasense 37 CFR 1.56(a) to explicitly incorporate affirmative egregious misconduct as set forth in Therasense Under the proposed rule, a patent will not be granted on an application in which affirmative egregious misconduct was engaged in 8
37 C.F.R. 1.56 Duty to Disclose Information Affirmative Egregious Misconduct Examples of behavior that would constitute affirmative egregious misconduct (where the applicant fails to cure the misconduct) (NPRM (2016) at 74992): An unmistakably false affidavit E.g., misrepresentation of evidence to the Patent Trial and Appeal Board Deliberately planned and carefully executed scheme to defraud the USPTO and courts Perjury Suppression of evidence Manufacture of false evidence 9
37 C.F.R. 1.56 Duty to Disclose Information Affirmative Egregious Misconduct The Federal Circuit has provided additional guidance on the type of activity that would not constitute affirmative egregious misconduct (NPRM (2016) at 74992): Mere nondisclosure of prior art references A failure to mention prior art references in an affidavit A failure to update a Petition to Make Special 10
37 C.F.R. 1.56 Duty to Disclose Information Other Disclosure Rules 37 C.F.R. 1.555 duty to disclose information in ex parte and inter partes reexamination proceedings The NPRM proposes to amend 1.555 to recite that the materiality standard for the duty of disclosure is but-for materiality and to incorporate affirmative egregious misconduct Proposed rule would cover the disclosure of information as to any matter that is proper for consideration in a reexamination proceeding (e.g., admissions by patent owner) as opposed to being limited to patents and printed publications 37 C.F.R. Part 11 governs Office of Enrollment and Discipline proceedings 37 C.F.R. 42.11 governs duty of candor in post-issuance proceedings under the AIA 11
Patent Fee Proposal Notice of Proposed Rulemaking: At-a-Glance
Overview Section 10 of the Leahy Smith America Invents Act (AIA) authorizes the United States Patent and Trademark Office (USPTO) to, in part, set or adjust by rule any fee established, authorized, or charged under Title 35 of the United States Code provided: The aggregate patent fee revenue equals the aggregate estimated cost of patent operations, including administrative costs. The USPTO first used AIA fee setting authority to set patent fees in FY 2013. Following the initial AIA patent fee setting, the USPTO now proposes to set and adjust patent fees using AIA authority to recover the aggregate estimated cost of the patent operation and USPTO administrative services that support patent operations. 13
Overview Cont. In keeping with the AIA fee setting process and USPTO policy: The Office conducted a comprehensive biennial fee review in FY 2015 to assess the effectiveness of the existing fee schedule. From the fee review, the Office developed several fee change proposals, which were consolidated and presented to the Patent Public Advisory Committee (PPAC) in October 2015 as an initial fee setting proposal. PPAC conducted a hearing in November 2015 and accepted public comments before preparing a written report in response to the initial proposal. The Office considered the PPAC report (released in February 2016) when it developed the notice of proposed rulemaking (NPRM). The Office plans to issue a final rule in 2017 following a review of comments received during the public comment period. 14
Fee Setting Goals and Objectives The goal of fee setting at the USPTO is to provide sufficient financial resources to facilitate the effective administration of the United States intellectual property system. The Office leadership reviewed and analyzed fee change proposals for their alignment to the USPTO 2014 2018 Strategic Plan goals and the USPTO s Fee Structure Philosophy, initially introduced during the 2013 fee setting process. The fee setting proposal in the NPRM is directly aligned to the following Strategic Plan goals: Goal I: Optimize Patent Quality and Timeliness Goal II: Pursue Global IP Policy Protection and Enforcement Management Goal: Achieve Organizational Excellence The Fee Structure Philosophy has four objectives or fee setting policy factors: Promote innovation strategies Align fees with the full cost of products and services Set fees to facilitate the effective administration of the patent system Offer application processing options 15
Rulemaking Outcomes With the proposed fee schedule, the Office aims to: Continue progress towards the goals and objectives of the USPTO FY 2014 2018 Strategic Plan Maintain the current trajectory to reach target pendency and backlog levels Maintain momentum for ongoing quality initiatives like the Enhanced Patent Quality Initiative (EPQI), which has already garnered significant public feedback and resulted in the establishment of 11 quality-focused programs Advance Patents End-to-End (PE2E), a technology solution that enables a new way of processing patent applications using a single software platform to manage examination activities and integrate with existing systems via integrated useroriented tools that help examiners act on applications Support the Patent Trial and Appeal Board s (PTAB) continued efforts to recruit and hire the appropriate level of judicial, legal, and support staff to deliver high quality and timely decisions, particularly for AIA trials and reexamination and ex parte appeals Achieve a minimum operating reserve balance in FY 2017 and work towards an optimal reserve balance by FY 2021 16
Proposed Patent Fee Adjustments 17
Proposed Fee Structure Changes The USPTO proposes to set or adjust the fees contained in the Table of Patent Fees Current, Proposed and Unit Cost. The more notable changes impact the following categories of fees: Basic Filing, Search, Examination and Issue Fees (Utility and Design) Excess Claims Information Disclosure Statements (IDS) Request for Continued Examination (RCE) PTAB: Appeal, Inter-Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBMR) Mega Sequence Submissions Late Filing of Sequence Listings in an International Application Streamlined Re-examinations Hague Agreement Fees Maintaining Multiple Reissue Patents Office of Enrollment and Discipline Fees Service Fees 18
Proposed Fee Structure for a Utility Patent Compared to Current Large Entity Fee Rates The fees to obtain a utility patent (file/search/exam and issue) are proposed to increase slightly while remaining significantly below cost to foster innovation and access to the intellectual property protection system. Small and micro entity discounts remain for eligible applicants. Maintenance fee rates are proposed to remain unchanged for all three stages. Additional revenue generated from the proposed increase will support continued improvements in patent examination quality, backlog reduction, and compact prosecution. Fee Current Proposed FY 2015 Percent Large Entity Large Entity Unit Change Fee Rate Fee Rate Cost Utility Filing Fee $280 $300 7% $277 Utility Search Fee $600 $660 10% $1,773 Utility Examination Fee $720 $760 6% $2,205 Utility Issue Fee $960 $1,000 4% $314 Total $2,560 $2,720 6% $4,569 19
Proposed Fee Structure for a Design Patent Compared to Current Large Entity Fee Rates The fees to obtain a design patent (file/search/exam and issue) are proposed to increase slightly beyond cost recovery for large entities to subsidize small and micro entity applicants. At the aggregate level, the Office does not fully recover the costs incurred to process design applications. Design patentees do not pay maintenance fees, and the majority of design applicants are eligible for small and micro entity fee reductions. Fee Current Large Entity Fee Rate Proposed Large Entity Fee Rate Percent Change The Office proposes moderate front-end fee increases to more closely align fee rates to costs given the lack of a back-end subsidy and the frequency of fee reductions for this filing type. In response to feedback from the Patent Public Advisory Committee (PPAC) and public, the USPTO reduced the proposed increase to the design issue fee by $200 for large entities. FY 2015 Unit Cost Design Filing Fee $180 $200 11% $277 Design Search Fee $120 $160 33% $397 Design Examination Fee $460 $600 30% $608 Design Issue Fee $560 $800 43% $314 Total $1,320 $1,760 33% $1,596 20
Proposed Fee Structure for Excess Claims Compared to Current Large Entity Fee Rates The Office proposes to increase excess claims fees for utility, plant, and reissue applications as well as reexamination and Patent Cooperation Treaty applications. The Office does not capture unit cost data for these services. Rather, revenue from these fees supports the front-end subsidies built into the fee rates for filing, search, and examination. In its report, the PPAC expressed opposition to the proposed fee rates and recommended a refund system in which excess claim fees are returned to applicants when claims are cancelled in response to a restriction requirement. Under this proposal, an applicant would only incur fees for the claims that are actually examined, not just filed. In response, the USPTO has committed to undertaking a study to determine the feasibility of the refund program that PPAC recommends. Fee Current Large Entity Fee Rate Proposed Large Entity Fee Rate Percent Change Each Independent Claim in Excess of Three $420 $460 10% Each Claim in Excess of 20 $80 $100 25% Multiple Dependent Claim $780 $820 5% 21
Proposed Fee Structure for IDS Compared to Current Large Entity Fee Rates In its initial proposal to the PPAC, the Office proposed to eliminate the certification requirement (under 37 C.F.R. 1.97 (e)). The PPAC noted that the process change and proposed fee increase could discourage applicants from filing promptly when new prior art is discovered. In response to PPAC and public comments, the USPTO has eliminated the proposed changes to IDS practice and instead proposes a moderate increase to the IDS submission fee rate to help defray aggregate costs towards meeting strategic goals. Fee Submission of an Information Disclosure Statement after First Action on the Merits (FAOM), before Notice of Allowance Current Large Entity Fee Rate Proposed Large Entity Fee Rate Percent Change $180 $240 33% 22
Proposed Fee Structure for RCEs Compared to Current Large Entity Fee Rates RCE fees are proposed to increase. The proposed increases to RCE fees would more closely align the fee rates with the cost of processing an RCE, as calculated using the most recently available cost data (FY 2015). The fee for the first RCE request is still below its unit cost, while the fee for a 2 nd and subsequent RCE is slightly above its unit cost. In its report, the PPAC questioned whether the proposed fee increases are warranted and suggested instead that the USPTO consider ways to reduce pendency and the need for RCEs. In response to concerns raised, the Office reduced the fee proposals for both RCE fees. While the revised proposal will not achieve full cost recovery for RCEs, it will bring collections closer to cost and therefore reduce the subsidy for RCE filings currently provided by other patent fees. In addition to the fee adjustments, the USPTO remains focused on initiatives aimed at reducing the need for RCEs. Fee Request for Continued Examination (RCE) - 1st Request (see 37 CFR 1.114) Request for Continued Examination (RCE) - 2nd and Subsequent Request (see 37 CFR 1.114) Current Large Entity Fee Rate Proposed Large Percent Entity Fee Change Rate FY 2015 Unit Cost $1,200 $1,300 8% $2,187 $1,700 $1,900 12% $1,540 23
Proposed Fee Structure for Appeals Compared to Current Large Entity Fee Rates The proposed appeal fee increases aim to better align fees with costs and allow continued progress on reducing the backlog of ex parte appeals. In its report, the PPAC stated that the substantial proposed increase to the notice of appeal and appeal forwarding fees would likely result in discouraging patent holders invocation of appeal procedures, which are frequently used out of necessity rather than choice. In response, the Office expresses that even with the proposed fee increases, fees do not fully recover costs. In FY 2015, ex parte appeal fees covered approximately 58% of the cost per appeal. The proposed fee increase results in a cost recovery of 72% per appeal. Since the initial AIA patent fee rulemaking in 2013, ex parte appeal fees have enabled the PTAB to hire more judges and greatly reduce the appeals backlog, from nearly 27,000 in 2012 to under 20,000 in FY 2015. Additional fee revenue will support further backlog and pendency reductions. Fee Current Large Entity Fee Rate Proposed Large Entity Fee Rate Percent Change FY 2015 Unit Cost Notice of Appeal $800 $1,000 25% $45 Forwarding an Appeal in an Application or Ex Parte Reexamination Proceeding to the Board $2,000 $2,500 25% $4,815 24
Proposed Fee Structure for IPRs, PGRs, and CBMs Compared to Current Fee Rates The Office proposes to increase trial fees. When the Office first set these fees using AIA authority in 2012, there was limited information to inform fee setting. Now, the Office has two years of historical cost data to inform revised fee rate proposals. The proposed increases aim to better align fees with cost and aid the PTAB to continue to meet required AIA deadlines. Still, compared to their FY 2015 unit cost, all of the trial fees remain below cost. The PPAC report specifically expressed support for fee adjustments for trial proceedings so that the PTAB has adequate resources to accomplish its mission. Fee Inter Partes Review Request Fee - Up to 20 Claims Inter Partes Review Post- Institution Fee - Up to 15 Claims Post-Grant or Covered Business Method Review Request Fee - Up to 20 Claims Post-Grant or Covered Business Method Review Post- Institution Fee - Up to 15 Claims Current Proposed Fee Rate Fee Rate Percent Change FY 2015 Unit Cost $9,000 $14,000 56% $22,165 $14,000 $16,500 18% $12,674 $12,000 $16,000 33% $16,213 $18,000 $22,000 22% $23,060 25
Alternatives and Cost-Benefit Analysis The Office conducted two analyses as required. The Office analyzed four alternatives for how well they aligned to the Office s rulemaking strategies and goals, which are comprised of strategic priorities (goals, objectives, and initiatives) from the USPTO 2014-2018 Strategic Plan (Strategic Plan) and the Office s fee setting policy factors. The four alternatives are: (1) the current NPRM, (2) unit cost recovery, (3) across the board increase, and (4) baseline (current fee schedule). The Initial Regulatory Flexibility Analysis (IRFA) finds that the proposed alternative does not impose undue or disproportionate burdens on smaller entities. The Regulatory Impact Analysis (RIA) concludes that the overall qualitative benefits to patent applicants, patent holders, other patent stakeholders, and society of the proposed fee schedule are significant, specifically those benefits related to the targeted fee schedule design changes. Both analyses found that patent applicants and holders can expect continued progress towards the Office s strategic priorities of quality enhancements and optimizing the timeliness of patent processing (through reductions to backlog and pendency). The proposed fee schedule will also provide the resources the Office estimates are necessary to continue IT improvements as it works to improve operations and the customer experience with the USPTO. Along with these improvements, the proposed schedule will allow the Office to build and maintain a viable operating reserve level that fulfills the need to mitigate operational risk caused by financial resource volatility, i.e., unanticipated funding fluctuations. 26
Benefits For Stakeholders In conclusion, implementation of the USPTO fee proposal will benefit the IP community by enabling the USPTO to: Continue to enhance the quality of patent examinations via enhanced initiatives based on public feedback during patent quality forums Achieve optimal examination times that will facilitate bringing valuable patent assets to market faster and reducing congestion for all other applicants Provide more patent prosecution options to enhance applicant choice and agency efficiency Align PTAB fees with costs while maintaining high quality and efficient proceedings Modernize patent IT systems to increase efficiencies by providing a uniform platform for conducting business with the Office, including registering, entering, and updating information, and paying fees Stabilize USPTO operations to deliver quality patent examinations and avoid future patent application backlogs, even in times of financial fluctuations Deliver value to fee-paying customers and the public through a streamlined and more cost-based fee schedule Recruit and retain the highest quality employees to accomplish the work of the Office 27
ENHANCED PATENT QUALITY INITIATIVES (EPQI)
Evolving Programs - Focused on three areas: Data Analysis Pillar 1 Pillar Topic 1 Submission for Case Topic Studies Submission for Case Pillar Studies 2 Pillar Clarity 2 and Correctness Data Clarity Capture and (Master Correctness Review Data Capture Form, or (Master MRF) Review Form, or Quality MRF) Metrics Quality Metrics Examiner Resources, Tools & Training Pillar 1 Automated Pre-Examination Search Pilot STIC Awareness Campaign Clarity of the Record Training Post-Grant Outcomes Pillar 3 Interview Specialist Changes to Process/Product Pillar 1 Clarity of of the the Record Record Pilot Pilot Pillar 3 Post-Prosecution Pilot Pilot (P3) Reevaluate (P3) QPIDS Design Reevaluate Patent QPIDS Publication Quality Design Patent Publication Quality 29
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Clarity of Record Pilot - Purpose Develop best Examiner practices for enhancing the clarity of various aspects of the prosecution record Study the impact on the examination process of implementing these best practices Find correct balance for appropriate recordation 31
Clarity of Record Pilot - Areas of Focus More detailed interview summaries More precise reasons for allowance Pre-search interview - Examiner s option Enhanced documentation of 7 areas of claim interpretation: Special definitions of claim terms Optional language Functional language Non-functional descriptive material Intended use or result (preamble and body of claim) "Means-plus-function" (35 U.S.C. 112(f)) Computer-implemented functions that invoke 35 U.S.C. 112(f) ("specialized" or "non-specialized") 32
Clarity of Record Pilot - Evaluation 2,600 Office actions (reviewed and recorded) Included a statistical mix of: Pre-Pilot Office actions Pilot Office actions Control group Best practices were gathered 33
Data - Interview Summaries 90% 80% 70% 60% % of Applicable Office Actions 80% 67% 63% 62% 55% 70% 50% 40% 30% 20% 10% 0% Substance of applicant's position described in the interview summary Substance of an agreement or next steps described in the interview summary Details of agreement reached Pre-Pilot Office Actions Pilot Office Actions 34
Data - 102 Rejections 100% 90% 80% 70% 60% 50% 40% 30% 20% 10% 0% 78% 91% % Applicable Office Actions When claims were grouped for purpose of rejection, all claim limitations from all grouped claims were clearly addressed 62% 78% If an intended use, purpose, or result limitation is broader that applicant's presumed interpretation as described in the spec, the explanation addressed why the broader interpretation is appropriate Pre-Pilot Office Actions Pilot Office Actions 35
Data -103 Rejections % Applicable Office Actions 80% 70% 70% 72% 60% 50% 40% 30% 20% 10% 0% 53% If a claim limitation contains an intended use limitation, the explanation addressed how the intended use limitation has been treated Pre-Pilot Office Actions 50% If a claim limitation contains non-functional decsriptive material, the explanation addressed how the limitation has been treated Pilot Office Actions 36
Data Reasons for Allowance % Applicable Office Actions where Reasons for Allowance Added to the Clarity of the Record 100% 80% 60% 40% 20% 59% 77% 0% Reasons for Allowance added to Clarity Pre-Pilot Office Actions Pilot Office Actions 37
Some Examination Takeaways Enhance the clarity of interview summaries by providing more comprehensive, but balanced, interview summaries Utilize the identified best practices of recording claim interpretation to improve clarity of Office actions without detracting from clarity Provide more comprehensive reasons for allowance Share examination best practices with other examiners 38
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Improving Clarity and Reasoning Training Program Goals To identify particular areas of prosecution that would benefit from increased clarity of the record and develop training To enhance all training to include tips and techniques for enhancing the clarity of the record as an integral part of ongoing substantive training 40
Highlighting Reasons for Allowance as a Tool for Clarity Enhancing Clarity By Ensuring Clear Reasons for Allowance Completed April 2016 Improve the quality and reliability of issued patents by providing a complete file history Facilitate the public s evaluation of a patent s scope and strength, as well as simplification of any potential patent litigation related thereto Remind examiners that reasons for allowance should be provided in an application when the examiner believes that the record as a whole does not make clear his/her reasons for allowing a claim or claims 41
Training Resources All examiner training, including the above ICR Training, is publicly available https://www.uspto.gov/patent/laws-and-regulations/examinationpolicy/examination-guidance-and-training-materials Stakeholder Training on Examination Practice and Procedure (STEPP) launched July 12 th Training series planned at regular intervals in Alexandria and at regional offices https://www.uspto.gov/patent/initiatives/stakeholder-trainingexamination-practice-and-procedure-stepp 42
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Topic Submission for Case Studies Pilot Program Dec. 2015 Fed. Reg. Notice sought input from public on topics for study Over 130 comments received Six topics selected for studies Purpose of studies: To identify quality issues as well as examples of examination best practices; To improve patent work products and examination processes; and To reveal areas where further training may be needed 44
Selected Case Studies 1. Evaluation of the deviation of 35 U.S.C. 101 rejections from official guidance, correctness of rejections and completeness of the analysis 2. Review of consistency of the application of 35 U.S.C. 101 across art units/technology centers 3. The practice of compact prosecution when 35 U.S.C. 101 rejections are made 4. Correctness and clarity of motivation statements in 35 U.S.C. 103 rejections 5. Enforcement of 35 U.S.C. 112(a) written description in continuing applications 6. Consistent treatment of claims after the May 2014 35 U.S.C. 112(f) training 45
Case Studies Case Study #1 Evaluation of the deviation of 35 U.S.C. 101 rejections from official guidance, correctness of rejections and completeness of the analysis: 816 rejections were studied 90% were determined to be properly rejected 75% of the properly rejected claims were properly explained 68% of the rejections were both correct and properly explained. 46
Case Studies Case Study #3 The practice of compact prosecution when a 35 U.S.C. 101 rejection and a prior art rejection could be made in the first Office action: 1.5 million Office actions from Series 13 and 14 applications OA were from February 2011 to November 2016 137,500 had non-final Office actions with both prior art rejections and subject matter eligibity (SME) rejections during prosecution 361 were found to have subsequent non-final prior art rejections that could have been made in the first Office action when the SME rejection was made. (0.26%) 47
Case Studies Case Study #4 Whether Examiners are making clear and correct rationale statements when setting forth rejections under 35 U.S.C. 103: 4916 random reviews were completed by Office of Patent Quality Assurance (OPQA) Reviews from Nov. 2015 thru April 2016 rejections were studied 48
Case Studies Case Study #4 cont. Correctness of the articulated Rationale: 85.7% - all rationale statements were correct 9.6% - at least one rationale statement was correct and at least one was incorrect 4.7% - all rationale statements were incorrect. Clarity of the rationale statements: 89.1% - all rationale statements were clear 7.5% - at least one rationale statement was clear and at least one lacked clarity 3.4% - all rationale statements lacked clarity. 49
Tips for Prosecuting Patent Applications under the AIA (for applications filed on or after September 16, 2012) 50
Name of the Inventor Applicants may name the inventor (i.e., the entire inventive entity) either by use of: A signed application data sheet (ADS) under 1.76 If filed before or with an inventor s oath or declaration; or An executed inventor s oath or declaration that names the entire inventive entity If filed before a signed ADS identifying the inventorship. The ADS and the inventor s oath or declaration require the legal name of the inventor. 51
Name of the Inventor: Correction, or Change in Order Once the names of the inventors are identified via use of a signed ADS or the signed inventor s oath or declaration, a request under 1.48 must be submitted other than in reissue applications ( 1.48(f)) to: Correct inventorship (addition or deletion); Correct or update the name of an inventor (e.g., misspelling, name change); or Change the order of the names as they would be printed on the face of the patent taken from the ADS or oath or declaration. 52
Name of the Inventor: Inventorship Correction Where the inventorship is to be corrected in a nonprovisional application, the following must be submitted ( 1.48(a)): An application data sheet for the entire actual inventive entity that identifies each inventor by his or her legal name; The processing fee under 1.17(i)(1) ($140/$70/$35); The fee under 1.17(d) ($600/$300/$150) if after an Office action on the merits, unless accompanied by statement that the request to change is solely due to cancelation of claims and A 1.63 oath or declaration or substitute statement will be required for any actual inventor who has not yet executed such an oath or declaration. ( 1.48(b)) 53
Oath or Declaration under 37 CFR 1.63: Time of Submission Applicants should continue to exercise reasonable diligence in determining who is the actual inventor. The Office recommends that applicants provide the oath or declaration on filing or shortly thereafter. The longer the delay, the more difficult it may be to obtain the signatures of all of the joint inventors. A substitute statement in lieu of the oath or declaration (37 CFR 1.64) may only be filed if a joint inventor is deceased, is legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute an oath or declaration. 54
Inventorship in 35 USC 371 National Stage Applications Inventorship in a 35 USC 371 application Will be taken from the ADS If a signed ADS is included with the initial submission Otherwise, inventorship will be that set forth in the international stage Including any change effected under PCT Rule 92bis See 37 CFR 1.41(e) 55
Correction of Inventorship in National Stage Applications A request under 1.48 need only include An ADS, A processing fee ( 1.17(i)), and An inventor s oath or declaration will be required for each actual inventor who has not yet executed such oath or declaration Alternatively, a substitute statement under 1.64 may be provided 56
Applicant A party who has less than the entire right, title, and interest in the invention may not act alone as the applicant. When a juristic entity is the applicant, it must be represented by a patent practitioner. 57
The Applicant: Sufficient Proprietary Interest For a person who otherwise shows sufficient proprietary interest in the matter, the applicant must submit a petition including: The fee set forth in 1.17(g) ($200); A showing that such person has sufficient proprietary interest; and A statement that making the application is appropriate to preserve the rights of the parties. ( 1.46(b)(2)). Note: Such persons are no longer restricted to situations where all the inventors refused to execute or could not be found or reached after diligent effort. 58
The Applicant: Correct, Update, or Change Name Use is required of a 1.76 application data sheet to ( 1.46(c)): Correct the name of the applicant where the name was originally incorrectly given (e.g., minor typographical error); Update the name of the applicant where the name of the applicant has been updated (e.g., company name change); or Change the name of the applicant where there is a new applicant (e.g., application is sold): Requires compliance with 3.71(b). Note 1.46 is amended effective May 13, 2015. 59
Applicants for 35 USC 371 National Stage Applications (1) Applicants for 35 USC 371 applications Will be those applicants identified in the international stage for the United States Unless changed in the national stage (37 CFR 1.46(b)) For a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including The fee set forth in 37 CFR 1.17(g) A showing that such person has sufficient proprietary interest and A statement that making the application is appropriate to preserve the rights of the parties (37 CFR 1.46(b)(2)) 60
Applicants for 35 USC 371 National Stage Applications (2) Once an applicant has been specified under 37 CFR 1.46(b) Any request to correct or update the name of an applicant must Include an ADS specifying the corrected or updated name in the applicant information section (37 CFR 1.76(b)(7)) Any request to change the applicant must Include an ADS specifying the applicant in the applicant information section (37 CFR 1.76(b)(7)), and Comply with 37 CFR 3.71 and 3.73 See 37 CFR 1.46(c) 61
The Applicant: Substitute Statements Only applicants sign substitute statements: Joint inventors (when applicant) can sign for inventors who refuse or can t be found or reached A legal representative can sign for a deceased or legally incapacitated inventor 1.46 applicants (e.g., an assignee) can sign under all four circumstances Cannot be found/reached, legally incapacitated, deceased or refusing to sign Cannot sign the substitute statement(s) Inventors who are not the applicant of record cannot sign. Assignees/obligated assignees who are not the applicant cannot sign. If a substitute statement signed by the legal representative is filed, the legal representative will be added as an applicant (either in place of the deceased/incapacitated inventor-applicant on in addition to any 1.46 applicant(s)) 62
The Applicant: Substitute Statements Where there are multiple applicant parties, all may have to sign the substitute statement for one inventor Where a substitute statement is filed, proof of the permitted circumstance is not required to be filed in the applicant, but you should retain this information in your records 63
Terminal Disclaimer For applications filed on/after September 16, 2012, only the applicant can make a terminal disclaimer (TD) Statute and rule specify that applicant can disclaim (35 U.S.C. 253, 37 CFR 1.321) The applicant must be the owner(s) of 100% of the entire right, title and interest If the owner(s) is/are not the applicant, then the applicant must be changed (37 CFR 1.46) before the TD will be accepted Disclaimer can be signed by applicant or patent practitioner of record 64
Post-Filing: Pre-Grant Publication Tips A Pre-Grant Publication may include amendments to the claims, abstract and drawings, but it will not include amendments to the specification unless submitted as a substitute specification. Filing a clean copy of the specification, claims, abstract, drawings and application data sheet in accordance with 37 CFR 1.215(c) will insure that the amendments will be included in the publication. After filing the application and receiving the confirmation number, submit the clean copy of specification, claims, abstract, drawings and ADS via EFS-Web using the radial button Pre-Grant Publication under 37 CFR 1.211 to 1.221 Filing a substitute specification including all of the amendments after entering the national stage may be used to generate the Pre-Grant publication. 65
Post-Filing: Publication Corrections Practitioners must include the assignment information in the ADS to assure publication contains this information Review the filing receipt promptly request corrections before publication, corrections must be received and processed before export of data for publication (approximately 9 weeks) When requesting Corrected Publication, be sure to indicate the material mistake(s) made by the Office e.g. a mistake affecting the public s ability to to appreciate the technical disclosure of the patent application determine the scope of the provisional rights sought see 37 CFR 1.221(b) and MPEP 1130 66
Understanding the Application Data Sheet (ADS) and Correcting or Updating the ADS Via EFS-Web
Understanding the Application Data Sheet (ADS) 68
New Landing Page for ADS Form Patent Forms Page Clicking on the link for the ADS form (PTO/AIA/14) on the Patent Forms page will bring applicant to a new landing page containing important information for completing the form instead of directly to the form 69
Who Reviews the ADS? OPAP is the Office of Patent Application Processing the first area that handles a patent application OPAP is the area that primarily reviews the ADS Captures bib data into office electronic systems Records authorizations to provide and receive applications between other partner countries Processes corrections to bib data 70
Submit an ADS on Day of Filing The Office strongly recommends submitting an ADS with the application at the time of filing rather than after filing the application Web-based ADS & a live PDF ADS (AIA/14) will auto-load if submitted on filing The ADS submitted upon filing must be properly signed by party under 37 CFR 1.33(b) S-signature must be acceptable Complete registration number Printed name must accompany signature 71
S-Signature 37 CFR 1.4(d)(2) The S-signature must consist only of letters (including Kanji, etc.), or Arabic numbers, or both, and appropriate spaces, commas, periods, apostrophes, or hyphens for punctuation. The person signing must insert his or her own signature between the forward slash marks, 1.4(d)(2)(i). The name of the person signing must be printed or typed immediately adjacent (i.e., below, above, or beside) to the S- signature, and be reasonably specific, so the identity of the signer can be readily recognized. A registered practitioner may S-sign but his or her registration number is required, either as part of the S-signature, or immediately below or adjacent to the signature ( 1.4(d)(2)(ii)). For example: /John Attorney Reg. #99999/ John Attorney 72
Effect of a Properly Signed ADS ADS Properly signed Establishes inventorship Establishes applicant Presents domestic benefit/foreign priority claims Does NOT establish power of attorney ADS Unsigned or not properly signed Does not set inventorship Does not set applicant Does not effectively present domestic benefit or foreign priority claims Most information is disregarded and captured from other documents Information captured from other sources will become of record and any changes to this information must be made using a properly signed, properly marked-up ADS 73
Application Information Capture Information is captured as it is provided either on an ADS or in other documents of record Information in ADS generally governs when submitted at same time No attempt is made to correct: Transposed or misspelled names Misspelled words in the title Incorrect application numbers in domestic benefit/foreign priority claims 74
ADS Filed After Filing All ADSs submitted after filing must be properly marked up Even if it is the first ADS submitted, because information was gathered from other documents upon filing and made of record All changes to information already of record must be marked up Some changes must be accompanied by additional forms as required according to nature of changes Changes to applicant 1.46(c) request and 3.73 Statement Changes to entity status certification, written statement, or petition may be required Changes to inventorship 1.48 request and fee(s); inventor s oath or declaration may be needed Changes to domestic benefit or foreign priority claim may require a petition 75
Applicant and the ADS Inventor is established as applicant by default if an applicant is not otherwise named in a properly signed ADS Change of applicant after inventorship is established requires a request under 37 CFR 1.46(c) Requirements to comply with 37 CFR 1.46(c) Corrected ADS with proper markings Statement under 37 CFR 3.73(c) 76
Applicant and the ADS (cont.) Applicant can only be changed, not deleted Change in applicant requires a 3.73 Statement to show ownership to new applicant Correction or update in the name of the applicant requires a corrected ADS Returning inventors to be the applicant requires a 3.73 Statement showing title back to inventors A 1.182 petition is required to attempt correction/removal of an improperly named applicant 77
ADS Common Problems: Filing by Reference Filing by Reference (FBR) section completed by mistake Filing by Reference is not a benefit claim 35 U.S.C. 111(c) prohibits rescission of FBR In limited circumstances, a petition under 37 CFR 1.182 may be available 78
ADS Common Problems: Reference/Benefit/Priority Sections Reference filing section completed by mistake Domestic benefit or foreign priority data missing, incorrect, improperly formatted, or not properly marked up Domestic benefit or foreign priority claims not timely must be presented within the later of 4 months from the actual filing date of the later-filed application or 16 months from the filing date of the prior-filed application (except in design applications) 79
ADS Common Problems: General Application not properly identified (when filing an ADS after the filing date) with application number and title ADS not properly signed (e.g., incorrect slashes, no registration number, not all inventors) invalidates ADS ADS not properly marked up when submitted after filing Inventor mailing address or residence not completed properly (i.e., city/state/country missing or not completed, invalid country name provided) 80
ADS Common Problems: Applicant Issues Failure to use proper markings to show changes to the information of record Failure to provide a proper 3.73 statement, when required A rejection of a change of applicant may affect a concurrently-filed power of attorney Correction/update of applicant name can be mistaken for change of applicant be sure to state in request that the change is requested under 37 CFR 1.46(c)(1) 81
ADS and Inventor s Oath/Declaration When the ADS sets inventorship, the name provided on the inventor s oath or declaration must match the name set forth in the ADS Both documents require legal name If names do not match, new inventor s oath or declaration or 1.48 request will be needed Exception for character substitution for characters that cannot be entered on ADS (for example: ss for ß, ae for ä, oe for ö) 82
Enhanced Web Based ADS The Web-based ADS is only displayed for new Utility and Design applications. It is currently not available for International or existing applications, or Supplemental Examination proceedings. To access the Web-based ADS, select the second radio button, Web-based ADS. This will expand the web screen and display the Web-based ADS fields. 83
Enhanced Web Based ADS Option to pre-populate application information based on a previously filed application. Data may be retrieved for: Registered efilers who have power of attorney in the parent application; or Both registered and non-registered efilers if the parent application is made available to the public, i.e. published or patented. The first step is to enter the application and confirmation number of the parent application, then click the Show button. Bibliographic information of the entered application number is displayed for verification purposes. 84
Enhanced Web Based ADS After verifying the bibliographic information, then the options to populate the following sections are available: Inventor Information Domestic Benefit/National Stage Information Foreign Priority Information Check the appropriate boxes and click Retrieve. These steps may be repeated to retrieve data from multiple applications to create multiple chains of priority. When retrieving Domestic Benefit/National Stage Information the entered parent information will be used as the first claim entry to the current application. You must enter the continuity type and status information for each application for which retrieval is requested. 85
Corrected ADS A corrected or later-filed ADS (for applications filed on or after September 16, 2012) must be marked up as set forth in 37 CFR 1.76(c) The corrected ADS will not be processed unless markings properly showing the changes are provided For more information on a corrected ADS, see MPEP 601.05(a) 86
Corrected ADS (cont.) A corrected or updated ADS may include: All sections listed in 1.76(b), or Only those sections containing changed or updated information ( 1.76(c)(2)) All information in the section must be provided, with identification of what has changed in the section Underlining for insertions, strike-through or brackets for deletions Bold, highlighting, comments, italics, other formatting, etc. are not acceptable markings Unmarked information will not be reviewed 87
Corrected ADS (cont.) A corrected ADS should be accompanied by a properly identified/indexed paper requesting action, such as, a request for a corrected filing receipt or a request to correct inventorship ( 1.48 request) a request to change the applicant (under 1.46(c)) Information regarding proper indexing of papers can be found at the following three web sites: http://www.uspto.gov/ebc/portal/efs/rules_doc_codes.htm http://www.uspto.gov/patents/process/file/efs/guidance/efs-webquickstartguide.pdf http://www.uspto.gov/ebc/portal/efs/cbt/efs-web-training.ppt 88
Showing Changes on a Corrected ADS Changes should be shown relative to the information of record, which is generally what is shown on the most recent filing receipt Inventor names may appear on the filing receipt even if inventorship has not been set by ADS or oath/declaration Changes to applicant should include applicant as listed on filing receipt ADS must include all information in the section that contains changes not just provide information that is being added/corrected 89
Corrected ADS via EFS-Web Corrected Web-based ADS almost always best option Best way to avoid rejection due to improper markings Will retrieve information of record, eliminating guesswork as to what has been captured and is of record with the Office Some info will be recorded, but not shown on the filing receipt mailing address, phone/fax/email 90
Correcting or Updating an ADS via a Corrected Web-Based ADS After signing into EFS-Web, to submit a Corrected Application Data Sheet, you must select the radio button located next to Existing application/patent. The Web screen will expand to display additional options. Select the radio button next to Application Data Sheet (ADS) providing updated or corrected information. 91
Inventor Information Inventor Information section, data of record will be displayed and editable. To make changes in the information, just type in the new information on the web screen and it will be reflected with underlining on the Corrected ADS that is generated. Do not delete information that you are not changing or do not want deleted, otherwise the Corrected ADS that is generated will provide an instruction to the Office to delete that information. 92
Inventor Information If you are adding or deleting inventor(s), then a request under 37 CFR 1.48(a) with the proper fee(s) must also be submitted. Both a processing fee and an additional fee may be due if the correction of inventorship is being made after the first action on the merits. See 37 CFR 1.48(c). If you are correcting or updating the name of an inventor, or changing the order of the names of joint inventors, then a request under 37 CFR 1.48(f) with the proper fee must also be submitted. 93
Correspondence & Representative Information In the Correspondence Information and Power of Attorney (POA) sections, data of record will be displayed, but the data is not editable. A change of correspondence address can be effected via private PAIR or filed in paper (see USPTO form PTO/AIA/122, Change of Correspondence Address ). the proper fee must also be submitted. These sections are not editable because the requirements for these elements are different and may require additional papers. 94
Application Information Data of record will be displayed and editable. The Title of the Invention is a required field. Note: Special characters may not be entered in this field as it may not transfer correctly to USPTO databases. Small entity status may be claimed by checking this box and properly signing the Corrected Web-ADS. See 37 CFR 1.27. If you are no longer entitled to small entity status, you must submit a properly signed written notification of a loss of small entity status pursuant to 37 CFR 1.27(g)(2). You cannot make this change by submitting a Corrected Web- ADS. 95
Domestic Benefit/National Stage Information Data of record will be displayed and editable. If any domestic benefit claims are being added in a utility or plant application after the time period set forth in 37 CFR 1.78, a petition to accept an unintentionally delayed benefit claim in compliance with 37 CFR 1.78 (including the petition fee) must also be submitted. 96
Domestic Benefit/National Stage The Corrected ADS that will be generated currently uses internal PALM codes rather than the language that you use to specify the relationship. This will be corrected in a future release. These codes on a Corrected Web-based ADS will be accepted: Continuation of CON A 371 of international NST Division of DIV Reissue of REI Continuation in part of CIP Substitution of SUB Claims benefit of provisional - PRO 97
Domestic Benefit/National Stage Information The corrected ADS will accept the data that you provide, make sure that the application numbers and filing dates are correct. 14/047,xxx was filed on 10/7/2013, and 14/856,xxx was filed on 9/16/2015. An application filed in 2013 cannot be a CIP of an application filed in 2015. Yet the computer generated: Can t be a CIP of a later application 98
Foreign Priority Information Data of record will be displayed and editable. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. Additional foreign priority claims may be added by clicking the Add button, and deleted by clicking the Remove button for the indicated claim. Enter the access code number to uniquely identify a patent application that is registered into the WIPO DAS (World Intellectual Property Organization Digital Access Service). 99
Applicant Information Additional applicant information may be added by clicking the Add button, and deleted by clicking the Remove button for the indicated Applicant entry. If you are changing the applicant, then you must also submit a request to change the applicant in compliance with 37 CFR 1.46(c). If you are correcting or updating the name of the applicant, then you must also submit a request under 37 CFR 1.46(c). 100
Applicant Information This is an example of updating the name of an Applicant 101
Web-based ADS and Corrected ADS Web-based ADS has a pre-population feature which can prepopulate inventor, benefit claim and foreign priority information Quick Start Guide for Web-based ADS www.uspto.gov/sites/default/files/documents/quick%20start %20Guide%20WebADS.pdf Corrected Web-based ADS will pre-populate with information that the Office has of record and create the required markings Quick Start Guide for Corrected (Web-based) ADS www.uspto.gov/sites/default/files/documents/corrected- WebADS-QSG.pdf 102
Petitions Information
Common Pitfalls to Avoid Document Codes Petitions that are filed without the proper document can result in delays in processing the petition Use of letter or miscellaneous codes can cause delays unless someone reviews and identifies these papers as a petition and notifies the appropriate office of the petition PET.OP is the most frequently used document code for most petitions handled by the Office of Petitions 104
Common Pitfalls to Avoid Avoid Last-Minute Filing of Oath/Dec Applicant can now defer filing until the NOA is issued. The application goes abandoned by law, however, if the Oath/Dec is not filed by time the issue fee is paid Late submissions may not be acceptable It may become difficult to obtain all the necessary signatures (e.g., inventor may refuse to sign) May need to file a petition to accept Oath/Dec without all signatures 105
Common Pitfalls to Avoid Avoid Last-Minute Filings of Benefit/Priority claims Ensure benefit/priority information is properly listed in the ADS Promptly review the filing receipt to verify accuracy of benefit/priority information Petitions for unintentionally delayed benefit/priority claims can be costly and can cause prosecution delays 106
Common Pitfalls to Avoid Avoid Last-Minute Filings to Withdraw from Issue The Petition/Request to withdraw must be granted before mid-night on Monday the day before the patent issues Merely filing the petition to withdraw before the patent issues does not prevent the patent from issuing File via e-petition for immediate processing Otherwise, there could be delays in the processing of the petition/request, and the patent could end up being issued 107
Common Pitfalls to Avoid Petition to Withdraw As Attorney should not be delayed Not effective when received, but when approved by Office Attorney still responsible for prosecuting the application until the Request/Petition to Withdraw as Attorney is granted/approved Delay in filing can result in increased cost and responsibility for the attorney Use the e-petition Immediate processing of petition and withdrawal from application 108
Common Pitfalls to Avoid What to do Before Filing Petition to Withdraw As Attorney Make sure to change all correspondence addresses before withdrawing as attorney Once attorney withdraws from representation they cannot change a correspondence address Failure to change the address will result in the attorney continuing to receive correspondences from the Office Withdrawal of Attorney is not processed in patented or abandoned applications The POA will remain in the file and only be processed if application is taken up for some action in the future Failure to withdraw before application issues/abandons results in attorney still being of record in these applications 109
Common Pitfalls to Avoid Reminder 1: Communications To Office Must Be in Writing Verbal agreements do not constitute a formal response Re interviews - Do not rely on a verbal agreement for an action to be taken Failure to file a formal response in writing before the period for response is filed will result in the abandonment of the application Responding by E-mail does not constitute a formal response and will not treated as a formal response Petitions must be properly signed 110
Common Pitfalls to Avoid Reminder 2: Petitions Are Not A Response To An Office Action Petitions do not stop the time running against an applicant for filing a response to an Office action Even if applicant is asking for review of the decision by the Office of Petitions, a response must be filed before the period for reply expires or the application will become abandoned 111
How to Submit Your Petition epetition EFS-Web Mail Central Fax (571) 273-8300 Deliver to Customer Service Window at Randolph Bldg. ONLY FOR PETITIONS TO WITHDRAW FROM ISSUE (in addition to the options listed above, you have the option to) - fax to (571) 273-0025 Office of Petitions - hand carry to security gate in Madison West lobby (600 Dulany Street, Alexandria, VA); guard will call Office of Petitions and a staff member will meet you in the lobby with log book and date stamp. See Office of Petitions website for further information on various petitions handled by Office Petitions and other useful information http://www.uspto.gov/patents-application-process/petitions
epetitions can be completely filled out online epetitions will only be accepted if every requirement is satisfied, therefore the only decision of record is a grant Decisions are instantaneous and uploaded to IFW When the epetition is granted, petitioner will receive an acknowledgement receipt that will also include a grant letter confirming approval of the epetition A Quick Start Guide for epetitions is available at: http://www.uspto.gov/patents/process/file/efs/guidance/ep etition-quickstart.pdf
Web-based epetitions that are available: Petition to Make Special Based on Age (37 CFR 1.102) Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36) Petitions to Withdraw from Issue after Payment of the Issue Fee Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2)) Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3)) Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned Patent Number) Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3) with Assigned Patent Number) Petitions for Revival Petition to Accept Late Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(a)) Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)) Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(a)) Petition for Revival of an Abandoned Patent Application Abandoned Unintentionally(37 CFR 1.137(a)) (For Cases Abandoned After 1st Action and Prior to Notice of Allowance) Petition to Correct Assignee After Payment of Issue Fee (37 CFR 3.81(b)) Petition to Accept Unintentional Delayed Payment of the Maintenance Fee (37 CFR 1.378(b))
Petition Resources Office of Petitions Help Desk (571) 272-3282 Inventor Assistance Center (IAC) 1 800 786 9199 OR (571) 272-1000 IPLA (PCT Legal) Help Desk (571) 272-4300 Other Support Numbers http://www.uspto.gov/patent/contact-patents In Appendix, starting at slide 179 are helpful additional slides re petitions 115
Best Practices for Prosecution/Patent Application Initiatives
Patent Application Initiatives http://www.uspto.gov/patent/initiatives/uspto-patent-application-initiatives-timeline 117
Track One Prioritized Patent Examination Program The Office s goal is to provide a final disposition within twelve months of prioritized status being granted Final disposition includes mailing of a notice of allowance or final Office action, filing of a notice of appeal, completion of examination as defined in 37 CFR 41.102, filing of an RCE, or abandonment of the application 118
Track One Requirements Original utility or plant non-provisional applications filed under 35 USC 111(a), may be continuation or divisional applications Track One utility applications must be filed via EFS-Web Must contain four or less independent claims, thirty or less total claims, and no multiple dependent claims Applicants are advised to submit Prioritized Examination Request Form PTO\AIA\424 when filing the application Prioritized examination fee must accompany the request 119
Track One Requirements for RCEs Requests for prioritized examination may be filed concurrently with or subsequently to the filing of a request for continued examination (RCE) The request for prioritized examination must be filed before the mailing of the first Office action after the filing of the RCE Prioritized examination fee must accompany request The same claim limitations apply to RCEs as to other applications 120
Track One Termination Prioritized examination of an application in the Track One program will be terminated If applicant files a petition for an extension of time to file a reply or a request for suspension of action If applicant files an amendment to the application resulting in more than four independent claims, more than thirty total claims, or a multiple dependent claim Upon termination of prioritized examination, the application will be placed on the examiner s regular docket in accordance with its stage of prosecution 121
Track One Pendency (cumulative through 12/2016) Filing to Petition Grant: 1.4 months Petition Grant to First Office Action: 2.1 months Petition Grant to Allowance: 5.2 months Petition Grant to Final Disposition: 6.5 months 122
Accelerated Examination (AE) The Accelerated Examination Program allows applicants who desire quick patent protection for their inventions a way to receive a final patentability decision by the examiner within 12 months; In order to meet the 12-month goal, an applicant will be required to provide additional information with the petition for AE, and comply with AE specific procedures throughout the examination process, to assist the examiner in expeditiously arriving at a final disposition 123
Accelerated Examination (AE) Program Requests for Comments on Whether AE Should be Continued In each of the fiscal years from 2012 to 2015, fewer than 250 applications have met the requirements to take advantage of the AE program. By contrast, Track One (implemented since 2012) has become a much more popular program than accelerated examination in that the number of requests approached 10,000 annually from 2012-2015 and exceeded 10,000 in 2016. It is unclear whether the accelerated examination program still provides a sufficient benefit to the public to justify the cost of implementation. USPTO published a Federal Register notice on January 12, 2017 (82 FR 3758) seeking public comments on whether the AE program should be continued. Written comments were due on March 13, 2017. 124
First Action Interview Pilot - FAI Promotes personal interviews prior to issuance of a first Office action on the merits Facilitates resolution of issues and advances prosecution of applications for timely disposition Conducted in accordance with current policy and practice, applications taken up in turn 125
Participating in the FAI An application suitable for FAI must: Be a non-reissue, non-provisional utility application under 35 USC 111(a) or national state application under 35 USC 371(c) Contain three or fewer independent claims and twenty or fewer total claims Not contain any multiple dependent claims Claim only a single invention Applicant must file a request for a first action interview using the USPTO s electronic filing system, EFS-Web, at least one day before a first Office action on the merits appears in the Patent Application Information Retrieval (PAIR) system) 126
Treatment of an Application in the FAI The examiner will conduct a prior art search and notify applicant of rejections and/or objections which the examiner believes are applicable to the application in a preinterview communication Applicant has one month (30 days) from the date of the pre-interview communication to request an interview, submit a reply (in which case the communication serves as the first Office action on the merits), or remove the application from the program 127
First Action Allowance Rate The First Action Interview Program (FAIP) allowance rate is calculated from the beginning of the pilot The first action allowance rate for new, non-continuing applications is based on first actions completed since Oct. 1, 2016 128
First Action Interview Program (May 16, 2011 March 22, 2017) Total Total applications 7895 Pre-interview Communications 4631 Interviews 4521 Total Allowances 4203 129
Patent Prosecution Highway (PPH) An effective way to leverage work done by other patent offices When an applicant receives a decision from a first patent office, where at least one claim in their application is allowable, the applicant can request to enter the PPH program in a second patent office If the request is granted, the second office can use the work done by the first office as a starting point That PPH case is then fast-tracked in the second office The second office is now looking at a case where most, if not all, of the major issues should already have been addressed 130
Patent Prosecution Highway (PPH) Benefits to Users and Offices Cost savings from fewer Office Actions, RCE s, etc. Higher quality shared search results Quicker allowances due to preliminary amendments matching scope of allowed subject matter in first office Provides a useful tool to expedite prosecution of claims in second office yields higher allowance rates. 131
Patent Prosecution Highway (PPH) Participation in the PPH program has grown steadily since starting in January 2012 Cumulative filings number close to 45,000 PPH Applications have: Reduced Appeal Rates (1.7% vs. 2.5%) Higher Overall Allowance Rate (84% vs. 67%) Higher First Action Allowance Rate ( 20% vs. 14%) 132
Ombudsman Program: Facilitates complaint handling when applications become stalled in the examination process Program Results (as of 2/28/2017) Total inquires (2010 through Feb. 2017) = 22,020 FY 2017 as of the end of Feb. 2017 = 1679 Top 4 inquiries: Status Inquiries - Filings (ADS, etc.) - Petitions - Prosecution Concerns - Average number of days to close inquiry for FY 2017 = 4.7 133
Ombudsman Program Monthly Totals FY Oct. Nov. Dec. Jan. Feb. Mar. Apr. May June July Aug. Sept. Total FY 2014 405 416 366 476 531 561 459 420 459 474 450 452 5469 FY 2015 429 377 331 458 411 431 473 350 440 358 428 373 4859 FY 2016 366 257 255 316 336 377 380 405 402 307 325 393 4119 FY 2017 301 351 308 370 349 600 500 400 300 200 100 FY 2014 FY 2015 FY 2016 FY 2017 0 OCT. NOV. DEC. JAN. FEB. MAR. APR. MAY JUNE JULY AUG. SEPT. 134
Third Party Pre-Issuance Submission (Sept. 16, 2012 Mar. 17, 2017) 1400 Number of Submissions Per TC 1200 1000 800 600 400 200 0 1600 1700 2100 2400 2600 2800 3600 3700 Total 3 rd Party Pre-Issuance Submissions 4930 135
Third Party Pre-Issuance Submission (Sept. 16, 2012 Mar. 17, 2017) Total Documents Patents 5413 Published US Apps 4463 Foreign Reference 3443 NPL 5771 Total Documents 19090 7000 6000 5000 4000 3000 2000 1000 0 Total Documents Breakdown Patents Published US Apps Foreign Reference Non-Patent Literature 136
After Final Consideration Pilot - AFCP 2.0 Encourages increased collaboration between the applicant and the examiner to effectively advance prosecution AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection While there are no fees unique to an AFCP 2.0 request, applicants must still pay any necessary existing fees such as extensions of time Applicants may file only one AFCP 2.0 request in response to an outstanding final rejection 137
AFCP 2.0 Eligibility Utility, plant, or design non-provisional applications filed under 35 USC 111(a) and national stage applications filed under 35 USC 371(c) which contain an outstanding final rejection Applicants must file a response under 37 CFR 1.116 including: A request for consideration under the pilot (Form PTO/SB/434) An amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect The pilot is currently extended until September 30 th, 2017 138
AFCP 2.0 Outcomes If the examiner determines that additional search and/or consideration can not be completed within the allotted time, the examiner will process the submission as a normal response under 37 CFR 1.116 If the examiner determines that any additional search and/or consideration can be completed within the allotted time, the examiner will either enter the amendment and mail a notice of allowance or, if the examiner determines that the application is not in condition for allowance, the examiner will request an interview with applicant to discuss the response 139
AFCP 2.0 Statistics (as of Feb. 2017) 216,667 AFCP 2.0 requests have been filed since the start date of May 19 th, 2013 55,810 allowances directly resulted from the AFCP 2.0 requests Appeal briefs were subsequently submitted in only 3.3% of AFCP 2.0 applications. This is compared to the 7% of cases with traditional after final submissions that subsequently submit appeal briefs Approximately 60% of AFCP 2.0 requests are provided additional consideration by examiners 140
After Final Consideration Pilot 2.0 (AFCP 2.0) (data through March 22, 2017) Fiscal Year Total AFCP 2.0 Requests Filed Additional Consideration and/or Updated Search After Final Consideration Program Amendment too Extensive After Final Consideration Program Improper Request Percent Cases Allowed on Next Action after Request 2013 12819 n/a n/a n/a 31% 2014 48035 n/a n/a n/a 28% 2015 55944 63.5% 33.2% 3.3% 28% 2016 68374 60.8% 36.5% 2.7% 25% 2017 31896 60.2% 37.1% 2.7% 26% 141
Pre-Appeal Brief Conference Applicants may request that a panel formally review the legal and factual basis of the rejections in their application prior to filing an appeal brief Applicant provides a succinct, concise and focused set of arguments for which the review is being requested During the pre-appeal brief conference, the panel, including the examiner of record, will consider the merits of each ground of rejection for which review has been requested 142
Pre-Appeal Brief Conference Requirements Applicants must file their request for pre-appeal brief conference concurrently with a proper notice of appeal and prior to filing an appeal brief The request should specify clear errors in the examiner s rejections or the examiner s omissions of one or more essential elements needed for a prima facie rejection No after-final or proposed amendment may accompany the request 143
Pre-Appeal Brief Conference Applicant will receive a decision indicating one of the following outcomes: The application remains under appeal because there is at least one actual issue for appeal Prosecution on the merits is being reopened, an appropriate Office action will follow The application is found to be allowable, prosecution remains closed, a notice of allowance will follow The request is dismissed because it fails to comply with at least one submission requirement 144
Pre-Appeal Conference Decisions FY 2011 FY 2017 (March 22, 2017) 2011 2012 2013 2014 2015 2016 2017 Grand Total Pre-Appeal Conference Decision Proceed to PTAB (Formerly BPAI) Pre-Appeal Conference Decision Rejection Withdrawn Pre-Appeal Conference Decision Reopen Prosecution Pre-Appeal Conference Decision Request Defective Grand Total 7110 7033 6686 7322 7151 7016 2845 45163 (64%) 752 900 765 811 715 707 307 4957 (7%) 4087 3174 2725 2793 2501 2455 1058 18793 (27%) 249 185 185 177 180 180 74 1230 (2%) 12198 11292 10361 11103 10547 10358 4284 70143 (100%) Proceed to PTAB Rejection Withdrawn Reopen Prosecution Request Defective 145
Post-Prosecution Pilot (P3) Program (July 11, 2016 Jan. 11, 2017) One of the evolving programs of the Enhanced Patent Quality Initiative (EPQI) developed to test its impact on enhancing patent practice during the period subsequent to final rejection and prior to the filing of a notice of appeal Combined certain features of AFCP 2.0 and the Pre-Appeal Brief Conference New features such as: Allowed an applicant to present oral arguments to a panel of examiners Ended on January 11, 2017 Data being studied 146
Post-Prosecution Pilot (P3) Program (July 11, 2016 Jan. 11, 2017) 1200 1000 Conference Outcomes 800 Finality Maintained 1031 600 Reopen Prosecution 263 400 200 Allowance 260 Grand Total 1554 0 Final Maintained Reopen Allowance 147
Quick Path IDS (QPIDS) The pilot is designed to allow consideration of an IDS filed after payment of the issue fee without filing a RCE IDS filed after payment of the issue fee, certification under 1.97 (e) To date 10,119 unique requests have been filed 90% have been completed Of the completed requests, 87% resulted in a corrected Notice of Allowance and have pass through to issue 13% have resulted in a RCE (5% of those were because of noncompliant OPIDS requests) 148
Quick Path IDS (QPIDS) Eliminates the requirement for processing of a RCE with an IDS filed after payment of the issue fee in order for the IDS to be considered by the examiner if the IDS does not necessitate reopening prosecution. Extended to run through September 30, 2017 Stats: FY 12 FY 13 FY 14 FY 15 FY 16 FY 17 QPIDS Totals Totals Totals Totals Totals Totals Up to March 18, 2017 TOTALS Total Number filed 491 1355 2425 2933 2915 1639 11758 Total QPIDS completed process 327 1169 2240 2744 2631 1418 10529 # Corrected NOA s mailed 280 997 1933 2412 2305 1257 9184 Total # RCE s processed 47 172 307 332 326 161 1345 149
FY 2017 Quarter 1 Statistics
Key Points of Interest for FY 17 FY17 1 st Q Statistics UPR First Action pendency is 15.7 months (down from 16.2 last quarter) UPR Total Pendency is 25.6 months (up from 25.3 last quarter) Attrition rate is 3.9% Total UPR filings are down 1.8% Patent Term Adjustment Update on Alice impacts 151
FY 2017 Filing Trends Total UPR filings are down 1.8% Serialized filings are down 1.6% RCE filings are down 2.2% Design filings are up 6.2% Provisional filings are down 1.2% 152
Analysis of Alice Impacts Reviewed serialized and RCE filing data and allowance rates in business methods, biologics, amusement devices, medical instruments, computer architecture, and overall Overall UPR filings are down 1.8% Serialized filings are down 1.6% RCEs are down 2.2% There have been no significant impacts in Biologics, Amusement/Education, Medical Instruments, or Computer Architecture Filings flat or increased Allowance rates flat Business Methods Serialized filings down RCE filings first declined then spiked and have since slowly dropped Close to pre-alice levels Decrease in allowance rate, although trending back up 153
PTA Performance Currently, just over 50% of first actions are being completed later than 14 months from filing Poorest performing category Performance in the 4/4/4 categories has historically been fairly good and continues to be so currently Amendments 5-10% overdue Appeal decisions 3-6% overdue Issues 1-2% overdue Currently approximately 20% of issues exceed 36 months total PTA pendency Will decline further along with overall average pendency 154
PTAB Results Overall affirmance rate of 56% through first quarter Tech center rates range from 39% (3600) to 68% (1600) Since 2009, both the percent of appeal briefs met with an examiner s answer AND the affirmance rate have both been increasing Suggests improved quality in the early stages of the examination process 155
Appendix 157
Proposed Patent Fee Adjustment Other revised fee proposals are shown on the following slides 158
Newly Proposed Patent Fees Mega Sequence Submissions The Office proposes two new fees aimed at dissuading applicants from submitting unnecessary large sequence listings that put undue burden on the Office s information systems. Based on historical data, the Office expects less than 10 applications per year will be subject to these fees. Fee Submission of sequence listings of 300MB to 800MB Submission of sequence listings of more than 800 MB Proposed Large Entity Fee Rate $1,000 $10,000 Late Filing of Sequence Listings in an International Application This is a newly proposed fee established pursuant to PCT Rule 13ter.1(c) and is similar in purpose and rate as that charged by other international intellectual property agencies. Additional information regarding the authority and purpose of this rule is available from the World Intellectual Property Organization (WIPO). Fee Late Filing of Sequence Listing Proposed Large Entity Fee Rate $300 159
Newly Proposed Patent Fees (continued) Streamlined Reexamination The Office proposes a new fee for a smaller, streamlined request for reexamination. This fee is half the rate of the existing request for reexamination ($12,000) and maintains the small and micro entity discounts. A streamlined application reduces the cost to the USPTO, which allows the Office to pass on the cost savings to applicants. Hague Agreement Fees The Office proposes to reset the international design application transmittal fee to provide small and micro entity discounts using AIA authority. The proposed fee rate for large entities remains the same. Fee Ex Parte Reexamination ( 1.510(a)) Streamlined Fee Hague International Design Application Fees - Transmittal Fee Proposed Large Entity Fee Rate $6,000 Proposed Large Entity Fee Rate $120 Maintaining Multiple Reissue Patents The Office proposes no change in fee rates. However, the Office proposes to change procedures such that maintenance fees shall be paid for each reissued patent. 160
Newly Proposed OED Fees Office of Enrollment and Discipline Fees The Office proposes several new OED fees aimed at better aligning fees with costs, streamlining administrative processes, encouraging self-service options, and promoting compliance. The PPAC raised concerns about the disciplinary proceeding fee and the ability for exonerated practitioners to receive refunds for punitive fees paid. In response, the Office clarifies that the processes behind this proposal are already in practice, pursuant to 37 CFR 11.60(d)(2), whereby the OED Director is currently authorized to recover expenses from a disciplined practitioner who seeks reinstatement. The proposed fee is only imposed on practitioners who seek reinstatement after having been suspended or excluded. Thus, there should be no concern that a practitioner would be subject to this proposed fee if he or she has been investigated and cleared, or has been disciplined but not suspended or excluded. The purpose of proposing this fee is simply to establish a new fee code by which to account for the receipt of these reimbursements. Fee On Grant of Limited Recognition Under 11.9(b) For USPTO-Assisted Recovery of ID or Reset of Password for the Office of Enrollment and Discipline Information System For USPTO-Assisted Change of Address Within the Office of Enrollment and Discipline Information System For USPTO-Administered Review of Registration Examination Disciplinary Proceeding Proposed Fee Rate $200 $70 $70 $450 at cost 161
Newly Proposed Patent Service Fees Service Fees The Office proposes to set several new service fees to facilitate the effective administration of the patent system. These newly proposed fees simplify the fee structure, explicitly state the service and fee to aid with customer decision making, and support the transition to the Office s new financial software for which defined fee rates rather than at cost rates are preferred. The PPAC report stated concerns about the high fees proposed for the two patent grant copy fees. The Office responds by explaining that these services are administratively burdensome, and the USPTO encourages customers to download this information at no cost via distribution channels the Office has had in place since June 2010. Proposed Fee Fee Rates Copy of Patent Grant Single-Page TIFF Images $10,400 (52 week subscription) Copy of Patent Grant Full-Text W/Embedded Images, Patent Application Publication Single- Page TIFF Images, or Patent Application Publication Full-Text W/Embedded Images (52 week subscription) $5,200 Copy of Patent Technology Monitoring Team (PTMT) Patent Bibliographic Extract and Other DVD (Optical Disc) $50 Copy of U.S. Patent Custom Data Extracts $100 Copy of Selected Technology Reports, Miscellaneous Technology Areas $30 Copy Patent File Wrapper, Paper Medium, Any Number of Sheets $280 Copy Patent File Wrapper, Electronic Medium, Any Size or Provided Electronically $55 Additional Fee for Overnight Delivery $40 Additional Fee for Expedited Service $160 162
Discontinued Fees The Office proposes to discontinue several fees not deemed necessary to facilitate the effective administration of the patent system. Most of the fees proposed to be discontinued are service fees, and many of them have been replaced with new fees more clearly aligned to specific services. Some fees are proposed to be discontinued because they have not been in use for many years. Historical cost information is not available for these proposed discontinued fees. Current Fee Fee Rates Self-Service Copy Charge, per Page $0.25 Establish Deposit Account $10 Uncertified Statement Re Status of Maintenance Fee Payments Copy of Patent-Related File Wrapper Contents That Were Submitted and are Stored on Compact Disk or Other Electronic Form (e.g., Compact Disks Stored in Artifact Folder), Other Than as Available in 1.19(b)(1); First Physical Electronic Medium in a Single Order Additional Fee for Each Continuing Copy of Patent-Related File Wrapper Contents as Specified in 1.19(b)(2)(i)(A) Copy of Patent-Related File Wrapper Contents That Were Submitted and are Stored on Compact Disk, or Other Electronic Form, Other Than as Available in 1.19(b)(1); if Provided Electronically Other Than on a Physical Electronic Medium, per Order Petitions for documents in form other than that provided by this part, or in form other than that generally provided by Director, to be decided in accordance with merits. $10 $55 $15 $55 At cost 163
EPQI 164
Clarity and Correctness Data Capture: Master Review Form (MRF) 165
Master Review Form (MRF) Program Goals To create a single, comprehensive tool (called the Master Review Form) that can be used by all areas of the Office to consistently review final work product Common review standard Common data points To better collect information on the clarity and correctness of Office Actions To collect review results into a single data warehouse for more robust analysis Increased precision in metrics More granular levels of analyses to detect anomalies, inconsistencies, and hot spots 166
MRF Design Modular designed smart-form 20+ modules Omitted/Made Rejections, Search, etc. 330 question library Correctness, clarity, best practices Auto-populated case details Integrated system with sampling and workflow features 167
MRF Looking Forward The MRF s single data warehouse facilitates: Better quality metrics Case studies without the need of directed, ad hoc reviews Rapid measurement of the impact due to training, incentives, or other quality programs on our work product Quality monitoring tools, such as dashboards Developing quality metrics from MRF review data 168
FY 2017 Quarter 1 Statistics
FY11-Q1 FY11-Q2 FY11-Q3 FY11-Q4 FY12-Q1 FY12-Q2 FY12-Q3 FY12-Q4 FY13-Q1 FY13-Q2 FY13-Q3 FY13-Q4 FY14-Q1 FY14-Q2 FY14-Q3 FY14-Q4 FY15-Q1 FY15-Q2 FY15-Q3 FY15-Q4 FY16-Q1 FY16-Q2 FY16-Q3 FY16-Q4 FY17 -Q1 Applications Awaiting First Action Unexamined Patent Application Inventory FY 2011 FY 2017 Q1 760,000 720,000 680,000 640,000 600,000 560,000 520,000 480,000 440,000 400,000 360,000 320,000 541,844 Unexamined Applications as of January 9, 2017 Quarter FY 2016 Result: 537,655 170
10/09 05/10 12/10 07/11 02/12 09/12 04/13 11/13 06/14 01/15 08/15 03/16 RCE Applications Awaiting Next Action RCE Inventory FY 2010 FY 2017 Q1 120,000 110,000 100,000 90,000 80,000 70,000 60,000 50,000 40,000 30,000 20,000 29,568 RCE Applications as of January 9, 2017 10,000 0 Month/Year 27,394 RCE Applications as of September 30, 2016. 171
FY11-Q4 FY12-Q1 FY12-Q2 FY12-Q3 FY12-Q4 FY13-Q1 FY13-Q2 FY13-Q3 FY13-Q4 FY14-Q1 FY14-Q2 FY14-Q3 FY14-Q4 FY15-Q1 FY15-Q2 FY15-Q3 FY15-Q4 FY16-Q1 FY16-Q2 FY16-Q3 FY16-Q4 FY17-Q1 Months First Action Pendency and Total Pendency FY 2011 FY 2016 (through January 31) 37.0 33.0 Total Pendency as of January 31, 2017: 25.6 months. 29.0 25.0 21.0 17.0 First Action Pendency as of January 31, 2017: 15.7 months. 13.0 9.0 Year/Quarter First Action Pendency Total Pendency 172
Months to Next Action Pendency from RCE Filing to Next Action 9.0 8.0 7.0 6.0 5.0 4.0 3.0 2.0 1.0 0.0 2010 2011 2012 2013 2014 2015 2016 2017-Q1 Fiscal Year 173
Percent 12-Month Average UPR Examiner Attrition Rate Less Transfers and Retirees and Overall Attrition Rate FY 2001 FY 2017 Q1 12% 11% 10% 9% 8% 7% 6% 5% 4% 3% 2% 1% 0% 12-Month Attrition Rate Less Transfers and Retirees: 2.75% 12-Month Overall Attrition Rate: 3.94% 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017- Year Q1 Attrition Rate Less Transfers and Retirees Overall Attrition Rate FY 2016 Attrition Rate Less Transfers and Retirees: 2.9% FY 2016 Overall Attrition Rate: 4.2% 174
Applications Serialized and RCE Filings FY10-16 700,000 600,000 500,000 400,000 300,000 200,000 100,000 0 2010 2011 2012 2013 2014 2015 2016 2017 Fiscal Year Serialized Filings RCE Filings 175
2012/10 2012/11 2012/12 2013/01 2013/02 2013/03 2013/04 2013/05 2013/06 2013/07 2013/08 2013/09 2013/10 2013/11 2013/12 2014/01 2014/02 2014/03 2014/04 2014/05 2014/06 2014/07 2014/08 2014/09 2014/10 2014/11 2014/12 2015/01 2015/02 2015/03 2015/04 2015/05 2015/06 2015/07 2015/08 2015/09 2015/10 2015/11 2015/12 2016/01 2016/02 2016/03 2016/04 2016/05 2016/06 2016/07 2016/08 2016/09 2016/10 2016/11 2016/12 2017/01 Applications Monthly Serialized Filings FY 2013 FY 2017 5,500 5,250 5,000 4,750 4,500 4,250 4,000 3,750 3,500 3,250 3,000 2,750 2,500 2,250 2,000 1,750 1,500 1,250 1,000 750 500 250 0 FITF Implemented One Year Post FITF Alice Decision TC 2100 Biologics and Diagnostics Year/Month Amusement/Education Business Methods Note: RCE filings are not included. There is some delay (up to several months) between filing and assignment of classification data, so recent months may under-count class-based filings. 176
Applications Monthly RCE Filings FY 2013 FY 2016 2012/10 2012/11 2012/12 2013/01 2013/02 2013/03 2013/04 2013/05 2013/06 2013/07 2013/08 2013/09 2013/10 2013/11 2013/12 2014/01 2014/02 2014/03 2014/04 2014/05 2014/06 2014/07 2014/08 2014/09 2014/10 2014/11 2014/12 2015/01 2015/02 2015/03 2015/04 2015/05 2015/06 2015/07 2015/08 2015/09 2015/10 2015/11 2015/12 2016/01 2016/02 2016/03 2016/04 2016/05 2016/06 2016/07 2016/08 2016/09 2016/10 2016/11 2016/12 2016/01 2,000 1,750 FITF Implemented Alice Decision 1,500 1,250 1,000 One Year Post FITF 750 500 250 0 Year/Month TC 2100 Amusement/Education Biologics and Diagnostics Business Methods Medical instruments and diagnostics 177
2012/10 2012/11 2012/12 2013/01 2013/02 2013/03 2013/04 2013/05 2013/06 2013/07 2013/08 2013/09 2013/10 2013/11 2013/12 2014/01 2014/02 2014/03 2014/04 2014/05 2014/06 2014/07 2014/08 2014/09 2014/10 2014/11 2014/12 2015/01 2015/02 2015/03 2015/04 2015/05 2015/06 2015/07 2015/08 2015/09 2015/10 2015/11 2015/12 2016/01 2016/02 2016/03 2016/04 2016/05 2016/06 2016/07 2016/08 2016/09 2016/10 2016/11 2016/12 2017/01 Monthly Allowance Rate 72% 63% 54% 45% 36% 27% 18% 9% 0% Year/Month UPR Allowance, Including RCEs Biologics and Diagnostic Methods Allowance Rate for Class 705 Amusement/Education Medical Instruments and Diagnostics TC 2100 178
2012/06 2012/07 2012/08 2012/09 2012/10 2012/11 2012/12 2013/01 2013/02 2013/03 2013/04 2013/05 2013/06 2013/07 2013/08 2013/09 2013/10 2013/11 2013/12 2014/01 2014/02 2014/03 2014/04 2014/05 2014/06 2014/07 2014/08 2014/09 2014/10 2014/11 2014/12 2015/01 2015/02 2015/03 2015/04 2015/05 2015/06 2015/07 2015/08 2015/09 2015/10 2015/11 2015/12 2016/01 2016/02 2016/03 2016/04 2016/05 2016/06 2016/07 2016/08 2016/09 2017/01 Reopening Rates Following Reversals 110% Business Methods - Reopening after Reversal 100% 90% 80% 70% 60% 50% 40% 30% 20% 10% 0% Year and Month of Action Following Reversal 179
Applications Design Filings FY 2009 FY 2017 Q1 45,000 Filings 40,000 35,000 30,000 25,000 20,000 15,000 10,000 5,000 0 2010 2011 2012 2013 2014 2015 2016 2016 2017 Fiscal Year 10,630 applications received in FY17 Q1 180
FY11-Q1 FY11-Q2 FY11-Q3 FY11-Q4 FY12-Q1 FY12-Q2 FY12-Q3 FY12-Q4 FY13-Q1 FY13-Q2 FY13-Q3 FY13-Q4 FY14-Q1 FY14-Q2 FY14-Q3 FY14-Q4 FY15-Q1 FY15-Q2 FY15-Q3 FY15-Q4 FY16-Q1 FY16-Q2 FY16-Q3 FY16-Q4 FY17-Q1 Applications Awaiting First Action Design Unexamined Application Inventory FY 2011 FY 2017 (through January 31) 50,000 45,000 40,000 35,000 30,000 25,000 20,000 15,000 10,000 5,000 0 FY 2017 Q1 is 42,258 Year/Quarter 181
FY11-Q4 FY12-Q1 FY12-Q2 FY12-Q3 FY12-Q4 FY13-Q1 FY13-Q2 FY13-Q3 FY13-Q4 FY14-Q1 FY14-Q2 FY14-Q3 FY14-Q4 FY15-Q1 FY15-Q2 FY15-Q3 FY15-Q4 FY16-Q1 FY16-Q2 FY16-Q3 FY16-Q4 FY17 Q1 Months Design First Action Pendency and Total Pendency FY 2011 FY 2017 (through January 31) 21.0 Design Total Pendency as of January 31, 2017: 19.6 months. 17.0 13.0 9.0 First Action Pendency as of January 31, 2017: 12.7 months. 5.0 Year/Quarter Design First Action Pendency Design Total Pendency 182
Reissues Filed By Fiscal Year FY 2010 FY 2017 (March 22, 2017) Year Reissue Filings 2010 675 2011 680 2012 829 2013 771 2014 959 2015 949 2016 833 2017 344 1200 1000 800 600 400 200 0 Reissue Filings By FY Year 2010 2011 2012 2013 2014 2015 2016 2017
Ex Parte Reexaminations FY 2010 FY 2017 (March 22, 2017) Year Ex Parte Reexams 2010 781 2011 768 2012 835 2013 329 2014 370 2015 255 2016 241 2017 99 900 800 700 600 500 400 300 200 100 0 Ex Parte Reexam Filings 2010 2011 2012 2013 2014 2015 2016 2017
Petitions Information
Channels for Review Appeal Challenges relating to the rejection of claim(s) (twice rejected) Petition Certain action/inaction of examiner or other USPTO official that is not subject to appeal
Five Components of a Petition 1. Must be in writing - 37 CFR 1.2 2. Must contain a statement of: Facts involved, Points to be reviewed & Relief requested Note: Copies of all evidence relied upon MUST be included 3. Must be accompanied by Fee, if required, to avoid summary dismissal Note: Recommend a general authorization to charge deposit account 4. Must be timely filed Encouraged to file as soon as a problem is detected after reviewing correspondence upon receipt from the USPTO The mere filing of a petition does not stay the period for reply or other proceedings 5. Must comply with any specific requirements as provided by statute, regulation or USPTO Policy
Petitions Handled in the Office of Petitions The Office of Petitions handles over 45 different petition types See the link below for further guidance on the petitions handled by the Office of Petitions. http://www.uspto.gov/patents-application-process/petitions www.uspto.gov Patents Petitions See generally MPEP 1002.02 to determine the deciding Office for various petition types
Most Common Petitions Request for Withdrawal as Attorney or Agent of Record Patent Prosecution Highway (PPH) Revival of Abandoned Application Based on Unintentional Delay Track One (Prioritized Examination) To Accept Unintentionally Delayed Claim for Priority
190
Petitions Timeline www.uspto.gov Patents Petitions Timeline
Petitions Timeline Example