Enhanced Examination Timing Control

1. Enhanced Examination Timing Control Robert A. Clarke Deputy Director Office of Patent Legal Administration Robert.clarke@uspto.gov

2. Enhanced Examination Timing Control, Three-Tracks Examination - Overview Goals: Provide framework to give more control on timing of examination to applicants; Rely more on the work product of other offices; and Eliminate or reduce work that applicants currently do not want the Office to perform. U.S. first-filed applicants are permitted to: 1) request prioritized examination (12-month goal), 2) by not requesting either prioritized or a PCT-like delay, traditional (currently 34-month average) or 3) request PCT-like delays (30 months to determine to continue). Traditional examination is the default.

3. Enhanced Examination Timing Control, Three-Tracks Examination – Overview of Foreign Office First Filings Applications filed in the USPTO that claim the benefit of a prior foreign filed application will be held in a pre-examination queue until a copy of a first action on the merits (FAOM) from prior foreign Intellectual Property (IP) office (OFF) and a U.S. style reply are received. Once received, the applicant may request prioritized examination (12-month goal) or if no request for prioritized examination is made, traditional examination would occur (currently 34-month average).

4. Timing Publication of request for comments and notice of public meeting: June 4, 2010 (75 FR 31763) Public Meeting: July 20, 2010 Close of Comment Period: August 20, 2010 Notice of Proposed Rule Making (anticipated): January 2011 Notice of Final Rule Making (anticipated): July 2011 Implementation (anticipated): October 2011

5. Track 1 US first-filed, Prioritized Examination is requested Sample Timeline – Prioritized Examination requested after filing 8/15/2011 6/15/2010 8/15/2010 Filing date Applicant electronically files an acceptable request for Prioritized Examination Goal for mailing a notice of allowance

6. Track 1 US first-filed, Prioritized Examination is requested • Track 1 provides options for innovators to receive an early indication of patentability and, if appropriate, a patent much faster than traditional timelines. The options are in three groups: • Existing prioritized • Acceleration programs, and • Cost recovery prioritized examination. • The goal is to provide final determinations within 12 months of filing or later submission of an Prioritized Examination request.

7. Track 1 US first-filed, Prioritized Examination is requested The existing program of Acceleration of Examination in which applicants conduct an appropriate search and analysis and submit the result on filing would continue to be available. This program served as a proof of concept of the docketing ability and oversight needed to provide final determinations within 12 months of filing. The option of upfront cost recovery would, if implemented, permit an applicant to self-prioritize an application on request and payment of a sizeable cost recovery fee.

8. Track 1 Prioritized Examination requested after Foreign FAOM and US style reply Sample Timeline – Non-US origin, Prioritized Examination requested 6/15/2009 6/15/2010 2/15/2011 6/15/2011 2/15/2012 Foreign filing date Projected receipt of acceptable FAOM and reply from OFF. Prioritized Examination was appropriately requested. Goal for mailing a first action U.S. filing date Goal for mailing a notice of allowance The date of the foreign FAOM will vary by foreign Office backlog and procedure. Here the applicant asked for and received expedited handling in the foreign office

9. Track 1 Prioritized Examination requested after Foreign FAOM and US style reply Track 1 provides options for innovators that file first outside of the US to receive an early indication of patentability and, if appropriate, a patent much faster than traditional timelines if the office of first filing (OFF) prioritizes the counterpart application. The track is the same as track 1 where the application did not make a priority claim to an application filed abroad after receipt of a first action on the merits from the OFF and a reply in US format to that office action. The OFF will perform initial work that may be partially relied upon and, therefore, some of the examination efforts will not need to be duplicated by the USPTO and applicant before the USPTO. Thus, applicants and USPTO would benefit. USPTO benefits from the work performed by the first office and will likely receive claim sets and arguments in the reply that will reduce the number of rejections that are necessary. Moreover, applicants, informed by the OFF’s first action, that do not believe they are entitled to claims justifying the cost of prosecution before the USPTO, may abandon the application rather than pay for the cost of preparing and submitting a US style reply to the action.

10. Track 2 US first-filed, PCT timing & Prioritized Examination not requested Sample Timeline – US origin, non-Prioritized Examination 6/15/2010 8/15/2012 9/15/2013 Projected FAOM Goal for mailing a notice of allowance Filing date The date of the first action on the merits (FAOM) will vary by work group backlog. The goal of mailing a notice of allowance will vary by prosecution events (e.g., a rejection is appealed, all claims are allowable on first action). Timeline shown is the current average which is projected to be reduced substantially over the next five years.

11. Track 2 Prioritized Examination not requested, Foreign FAOM and US style reply Sample Timeline – Non-US origin, non-Prioritized Examination 8/15/2010 8/15/2011 8/15/2013 10/15/2015 11/15/2016 Filing date at OFF Filing date at USPTO Projected receipt of acceptable FAOM and reply Goal for mailing a first action Goal for mailing a notice of allowance The date of the foreign and domestic FAOM will vary by foreign procedure and foreign and domestic work group backlog. The goal of mailing a notice of allowance will vary by prosecution events (e.g., rejection is appealed, all claims are allowable on first action). Timeline shown is current average but beginning on the date of receipt of the foreign search report and reply.

12. Track 2 PCT timing & Prioritized Examination not requested Track 2 is the default track for applicants. Continuing applications that do not request prioritized examination will also be put in track 2. Where the US application claims the benefit of an application filed in another IP office, the OFF will perform initial work that may be partially relied upon and, therefore, some of the examination efforts will not need to be duplicated by the USPTO and applicant before the USPTO. Thus, applicants and USPTO would benefit. USPTO benefits from the work performed by the OFF and will likely receive claim sets and arguments in the reply that will reduce the number of rejections that are necessary. Moreover, applicants, informed by the OFF’s first action, that do not believe they are entitled to claims justifying the cost of prosecution before the USPTO may abandon the application rather than pay for the cost of preparing and submitting a US style reply to the action. There is delay, however, in examination.

13. Track 3 US first-filed, PCT timing requested Sample Timeline – US origin, non-Prioritized Examination 6/15/2010 12/15/2012 2/15/2015 3/15/2016 Expiration of time period to file request for further processing Filing date Projected FAOM Goal for mailing a notice of allowance The date of the FAOM will vary by work group backlog. The goal of mailing of a notice of allowance will vary by prosecution events (e.g., rejection is appealed, all claims are allowable on first action). Timeline shown is the current average but starting on expiration of the time period to request further processing.

14. Track 3 US first-filed, PCT timing requested Track 3 is the track for applicants that file first in the US, but prefer to benefit from delay in processing by the USPTO so that more informed decisions as to whether to prosecute an application (e.g., what claims to pursue, whether to request and file for prioritized examination, or what investors may be located to fund the innovation). All applications in this queue must be published at 18-months. Upon expiration of the 30-month period, applicants must affirmatively request examination, similar to an international application and must complete any of the fees that were deferred. Thereafter, the application is treated as a track 2 application but one that was filed when examination was requested. A Patent Term Adjustment (PTA) offset is proposed that would offset the delay in Track 3 after expiration of the average time to mailing of a first action of a Track 2 application that does not claim the benefit of a foreign filed application. Thus, the average period of de facto deferral would not be used as a PTA offset.

15. Flexibility: Changing Lanes Speeding up: Any US first-filed applicant may request Track 1 at any time on payment of the prioritization fee. USPTO anticipates granting and docketing these requests automatically. Any non-US first-filed applicant may request Track 1 concurrently or after having submitted to USPTO a copy of the FAOM from the office of first filing and a US style reply. The request may occur after the FAOM, such as when an appeal to the BPAI is filed. Slowing down: A Track 1 applicant may request transfer to Tracks 2 or 3 at any time prior to first action if the application could have requested Track 3 on filing. Note: any nonpublication request must be rescinded prior to granting a request for track 3. Continuing applications and requests for continued examination (RCE): A continuing application or RCE may on filing request placement in any of the tracks that the parent application or prosecution prior to the RCE could have been placed. If cost recovery prioritization is requested the cost recovery fee must again be paid.

16. Major benefits Flexible system puts innovators in charge of timing of application process. Prioritized innovations, which are more likely to be used in the near term, would be processed much faster than today. Applicants that want to delay must publish disclosures. Requirements in Tracks 1-3 to file a submission prior to examination may result in considerable drop out of applications for which patent protection is no longer desired. For example, if 20% of foreign first-filed applications drop out more than 48,000 applications would not be added to the backlog for examination and the Office resources would be more focused on work that applicants still want done.

17. Major benefits (continued) USPTO examination as an office of second filing is informed by both the FAOM of the OFF and the USPTO-style reply to that action. This should make the US prosecution more efficient for both the applicant and the USPTO. USPTO receives additional funding from the applicants having greater need for services. USPTO would focus examination efforts on applications that are more likely to be important to the economy.

18. Supplemental Searches The USPTO is also requesting public input on whether and how the Office could provide applicants with the option of requesting supplemental searches performed by other IP granting offices.