The USPTO has published a request for comments that provides more detail on the potential multi-track examination timing initiative. (75 FR 31763). A public meeting will be held on July 20, 2010, 1:30 pm at the USPTO. Written comments must be submitted by August 20, 2010. Written comments, requests to attend the meeting, and requests to present at the meeting should all be sent to 3trackscomments@uspto.gov.
The potentially greatest impact of the proposal is directed toward applicants that claim foreign priority. In all such cases, the PTO is proposing that the office delay examination until the PTO receives a copy of the first office action and applicant reply from the foreign prosecution.
Under the initiative, for applications filed in the USPTO that are not based on a prior foreign-filed application (e.g., that do not claim foreign priority benefit), applicant would be able to: (1) Request prioritized examination (Track I); (2) for non-continuing applications, request a delay lasting up to 30 months in docketing for examination (Track III); or (3) obtain processing under the current procedure (Track II) by not requesting either (1) or (2). For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USPTO until the USPTO receives a copy of the search report, if any, and first office action from the foreign office and an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO. Following or concurrent with the submission of the foreign office action and reply, applicant may request prioritized examination or obtain processing under the current procedure.
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While it is believed that most applicants will continue to file applications first in their national or regional office based on business needs or costs of translation, comment is also requested on whether the USPTO should anticipate a larger number of applications being filed at the USPTO first rather than an applicant’s national office. Additionally, would this filing pattern change if (as proposed in various patent law reform bills) a foreign filing date could be used as a prior art date under US law?
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The instant proposal permits deferral of certain fees if Track III examination is requested. … [C]omments to this notice are requested on whether PTA should be limited by a request by applicant for deferred examination in the office of first filing. Similarly, comments are also requested on whether PTA should be limited if the applicant does not request accelerated examination in the office of first filing.
Prioritized Examination (Track I): For some applicants with a currently financed plan to commercialize or exploit their innovation or a need to have more timely examination results to seek additional funding, more rapid examination is necessary. While some programs are currently available to prioritize applications (e.g., the accelerated examination program and the petition to make special program), some applicants neither want to perform the search and analysis required by the accelerated examination program nor can they seek special status based on the conditions set forth in 37 CFR 1.102. For such applicants, the USPTO is proposing optional prioritized examination upon applicant’s request and payment of a cost recovery fee. A request for prioritized examination may be made in a USPTO first-filed application at any time and may be made in any other application only after receipt of a copy of the search report, if any, and first action on the merits from the intellectual property office in which the relied-upon application was filed and an appropriate reply to that action in the application filed in the USPTO. On granting of prioritized status, the application would be placed in the queue for prioritized examination.
The fee would be set at a level to provide the resources necessary to increase the work output of the USPTO so that the aggregate pendency of non-prioritized applications would not increase due to work being done on the prioritized application. The fee would also be set to recover any other additional costs associated with processing the prioritized application. For example, if work output is to be increased by hiring new examiners, then the fee for prioritized examination would include the cost of hiring and training a sufficient number of new employees to offset the production work used to examine prioritized applications. Under the USPTO’s current statutory authority, the USPTO is not permitted to discount the fee for small entity applicants. Should the USPTO’s authority to set fees be enhanced, it is anticipated that the USPTO would discount this fee for small and micro entity applicants, given the substantial fee that would need to be charged to recover all of the costs associated with the contemplated service.
The USPTO is also considering limiting the number of claims in a prioritized application to four independent and thirty total claims. In addition, the USPTO is considering requiring early publication of prioritized applications so that applications would be published shortly after a request for prioritization is granted, or eighteen months from the earliest filing date claimed, whichever is earlier.
All applications prioritized on payment of a fee, or accelerated or advanced out-of-turn under existing programs, would be placed in a single queue for examination on the merits and *31766 would be taken up out-of-turn relative to other new or amended applications. The goals for handling applications in this queue would be to provide a first Office action on the merits within four months and a final disposition within twelve months of prioritized status being granted. If this process is implemented, the USPTO anticipates that it would provide statistics on its progress in meeting these goals on its Internet Web site.
To maximize the benefit of this track, applicant should consider one or more of the following: (1) Acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest that the applicant believes he is entitled in view of the state of the prior art to the narrowest that the applicant is willing to accept; (2) filing replies that are completely responsive to the prior Office action and within the reply period (shortened) set in the Office action; and (3) being prepared to conduct interviews with the examiner.
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An applicant-controlled up to 30-month queue prior to docketing (Track III): Some applicants file an application just prior to the statutory bar date but before a commercially viable plan for exploitation of the innovation has been developed or financed. To better provide for the timing of examination that such applicants desire and to provide a similar time period to that provided internationally, the USPTO is considering permitting any applicant in an application that does not claim benefit of a prior-filed foreign application or prior non-provisional application to select, on filing or in reply to a notice to file missing parts, an applicant-controlled up to 30-month queue prior to docketing for examination. In order to avoid delays in notice to the public, any application requesting Track III must also be published as an 18- month patent application publication. An application granted this status would be placed in a queue for applicant to request examination and pay the examination fee with the surcharge (if not already paid) within thirty months of the actual filing date of the application or any relied-upon provisional application (i.e., to which benefit is claimed under 35 U.S.C. 119(e)). Failure to request examination within the 30-month period would result in abandonment of the application. The request for examination and examination fee (and surcharge) would be due on the 30-month date but could be submitted early (e.g., on filing of the application) with a request that the application remain in the pre-examination queue for a period of time (e.g., up to 30 months from filing). On expiration of the time period, the application would be placed in the queue for examination.
On receipt of the request for this queue, the USPTO would determine if the application was ready for publication as a patent application publication (except for the receipt of the examination fee) and determine if any request for nonpublication made on filing had been rescinded. If both conditions were met, the application would be placed in a queue to await a request for examination and payment of the examination fee. If the application was not ready for publication, a requirement to place the application in condition for publication would be made and, once satisfied, the application would be placed in the 30-month queue. The request for examination and payment may be made at any time during the 30-month period. If no request is made within the 30-month period, the application would be held abandoned. The examination fee and the surcharge may be paid within the 30-month period or may be submitted after a timely request for examination is filed on notice of non-payment by the USPTO, along with any required extension of time fees.
Upon receipt of the examination request and fee, the application would be placed in the queue for examination, but the receipt date of the examination request would be used as the “date in queue.” Thus, the application will be taken up for examination as if the request date was the application’s actual filing date. If applicants determine that more rapid examination is desirable, then they may request (and pay the required fee) for prioritized examination while the application is in the queue for examination.
PTA Offset: Currently, the USPTO is considering a rule to offset any positive PTA accrued in a Track III application when applicant requests that the application be examined after the aggregate average period to issue a first Office action on the merits. For example, if the aggregate average time to issue a first Office action is 20 months and applicant requests that the application be examined at month 30, the proposed PTA reduction would be 10 months beginning on the expiration of the 20-month period and ending on the date on which applicant requested examination to begin. The overlap with the aggregate average period when the USPTO would not be able to have issued a first Office action on the merits would not be treated as an offsetting reduction.
PTA Offset for Foreign Delay: Similarly, for an application in any of the three tracks that claims foreign priority, the USPTO is considering a rule to offset positive PTA accrued in the application when applicant files the required documents (that include a copy of the search report, if any, and first office action from the foreign office and an appropriate reply to the foreign office action as if the foreign office action was made in the application filed at the USPTO) after the aggregate average period to issue a first Office action on the merits. For example, if the aggregate average time to issue a first Office action is 20 months and applicant submits the required documents 30 months after the filing of the application, then the proposed PTA reduction would be 10 months beginning on the expiration of the 20-month period and ending on the date of the filing of the required documents. Thus, delays by foreign offices beyond the aggregate average time for the USPTO to issue a first Office action on the merits would be an offsetting reduction against any positive PTA accrued by the delay in issuing a first Office action while the USPTO awaits the preparation of a search report and first action by the office of first filing.
In Tracks I and II, if the U.S. application claims the benefit of a prior-filed foreign application, and the relied-upon foreign application is abandoned prior to an action on the merits being made available, applicant must notify the USPTO and request that the application be treated for examination queuing purposes as if the foreign priority claim had not been made. The USPTO is considering making the failure to notify the USPTO within three months of the abandonment in the foreign office trigger a PTA offset as the USPTO would not appreciate the need to treat the application as if first-filed in the USPTO until such notice is given. Similarly, if the office of first filing has a practice of not producing actions on the merits, applicant would need to notify the USPTO that the application should be treated for examination queuing purposes as if the foreign priority claim had not been made.
Comments on one or more of the following questions would be helpful:
- Should the USPTO proceed with any efforts to enhance applicant control of the timing of examination?
- Are the three tracks above the most important tracks for innovators?
- Taking into account possible efficiency concerns associated with providing too many examination tracks, should more than three tracks be provided?
- Do you support the USPTO creating a single queue for examination of all applications accelerated or prioritized (e.g., any application granted special status or any prioritized application under this proposal)? This would place applications made special under the “green” technology initiative, the accelerated examination procedure and this proposal in a single queue. For this question assume that a harmonized track would permit the USPTO to provide more refined and up-to-date statistics on performance within this track. This would allow users to have a good estimate on when an application would be examined if the applicant requested prioritized examination.
- Should an applicant who requested prioritized examination of an application prior to filing of a request for continued examination (RCE) be required to request prioritized examination and pay the required fee again on filing of an RCE? For this question assume that the fee for prioritized examination would need to be increased above the current RCE fee to make sure that sufficient resources are available to avoid pendency increases of the non-prioritized applications.
- Should prioritized examination be available at any time during examination or appeal to the Board of Patent Appeals and Interferences (BPAI)?
- Should the number of claims permitted in a prioritized application be limited? What should the limit be?
- Should other requirements for use of the prioritized track be considered, such as limiting the use of extensions of time?
- Should prioritized applications be published as patent application publications shortly after the request for prioritization is granted? How often would this option be chosen?
- Should the USPTO provide an applicant-controlled up to 30-month queue prior to docketing for examination as an option for non-continuing applications? How often would this option be chosen?
- Should eighteen-month patent application publication be required for any application in which the 30-month queue is requested?
- Should the patent term adjustment (PTA) offset applied to applicant-requested delay be limited to the delay beyond the aggregate USPTO pendency to a first Office action on the merits?
- Should the USPTO suspend prosecution of non-continuing, non-USPTO first-filed applications to await submission of the search report and first action on the merits by the foreign office and reply in USPTO format?
- Should the PTA accrued during a suspension of prosecution to await the foreign action and reply be offset? If so, should that offset be linked to the period beyond average current backlogs to first Office action on the merits in the traditional queue?
- Should a reply to the office of first filing office action, filed in the counterpart application filed at the USPTO as if it were a reply to a USPTO Office action, be required prior to USPTO examination of the counterpart application?
- Should the requirement to delay USPTO examination pending the provision of a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action be limited to where the office of first filing has qualified as an International Searching Authority?
- Should the requirement to provide a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action in the USPTO application be limited to where the USPTO application will be published as a patent application publication?
- Should there be a concern that many applicants that currently file first in another office would file first at the USPTO to avoid the delay and requirements proposed by this notice? How often would this occur?
- How often do applicants abandon foreign filed applications prior to an action on the merits in the foreign filed application when the foreign filed application is relied upon for foreign priority in a U.S. application? Would applicants expect to increase that number, if the three track proposal is adopted?
- Should the national stage of an international application that designated more than the United States be treated as a USPTO first-filed application or a non-USPTO first-filed application, or should it be treated as a continuing application?
- Should the USPTO offer supplemental searches by IPGOs as an optional service?
- Should the USPTO facilitate the supplemental search system by receiving the request for supplemental search and fee and transmitting the application and fee to the IPGO? Should the USPTO merely provide criteria for the applicant to seek supplemental searches directly from the IPGO?
- Would supplemental searches be more likely to be requested in certain technologies? If so, which ones and how often?
- Which IPGO should be expected to be in high demand for providing the service, and by how much? Does this depend on technology?
- Is there a range of fees that would be appropriate to charge for supplemental searches?
- What level of quality should be expected? Should the USPTO enter into agreements that would require quality assurances of the work performed by the other IPGO?
- Should the search be required to be conducted based on the U.S. prior art standards?
- Should the scope of the search be recorded and transmitted?
- What language should the search report be transmitted in?
- Should the search report be required in a short period after filing, e.g., within six months of filing?
- How best should access to the application be provided to the IPGO?
- How should any inequitable conduct issues be minimized in providing this service?
- Should the USPTO provide a time period for applicants to review and make any appropriate comments or amendments to their application after the supplemental search has been transmitted before preparing the first Office action on the merits?
Should divisionals filed in response to restriction/election requirements be taken up before continuations?
I think so.
“give effect to US patents”
would that be sorta like the Berne Convention’s giving effect of national law?
Max, to take the US Imperium to the next level, we should require that every “ally” give effect to US patents. In this way, we would quickly get to a “world patent.”
Babel, is the USPTO perhaps recalling Madrid Convention work in trademark practice, with registration held up everywhere, till the home country registration issues.
To readers reflecting on reciprocity: can you name any foreign country that dishes out treatment to American applicants that is the reciprocal of the Hilmer Doctrine which US law hands down to aliens who apply to the USPTO?
Henry Ford apparently said you can have one of his cars in any colour you like, as long as it’s black. Are we to understand the US attitude to be that any resident of any Paris Convention country seeking a fully effective patent app priority date can apply to any Patent Office of their choosing, as long as it is the USPTO?
What if every Paris Convention country were to write its own Hilmer Doctrine? Do you see any problem with that? I refuse to believe that today’s internationally sophisticated USPTO is indistinguishable from Mr Hilmer.
Ned
Yeah, well my point is more along the lines of by enacting a rule like this, Kappos would be usurping the right of applicants to make certain decisions about when they file and where they file.
If I want to file in Turkmenistan, which I rarely do, that should have absolutely no impact on how long it takes to get an examination in the US.
Don’t rely on foreign priority????? What, are you kidding? Are we going to turn this whole international scheme on its head? You are seriously suggesting giving up procedural rights like foreign priority so the lazy US examiners can look over the shoulders of the others?
I haven’t really had time to think it through, but what if every country where to take this approach? Sometimes we file an application in 25 different countries. Do all of those applications sit there and smolder until the first one filed gets an OA and response?
And if Kappos is going to float a rule that says wait until the first foreign office action, why can’t he float one that says to wait until the foreign application is allowed?
This is nothing more than a proposal put forward by POPA to further reduce the amount of work examiners are required to do. Lazzzzy.
Frequent Runner – you tell me – which foreign patent office do you have in mind (and a Treaty is not a foreign office)?
Does PCT search report qualify as the action from foreign patent office?
Agree with poster above that this is silly. Just raise fees and make the whole process faster/better. Giving patentees another way to game the system to get submarine patents is not a good idea.
This falls under the guise of “if you don’t want the US to be the gold standard (and file here first) then we don’t want you as a customer, but we don’t want to lose your money”
or
You wanna play here? then youza gotsa follow our rules.
Babel Boy, others have pointed out the simple solution: don’t rely on foreign priority. Simply file in the US as soon as you are able. Use a provisional. That gives you 21 years from filing to expiration.
Obviously, this is not ideal if it takes any time to obtain permission to file abroad. But, I assume in most cases the national and the US filing could take place on the same day.
“. . .the PTO is proposing that the office delay examination until the PTO receives a copy of the first office action and applicant reply from the foreign prosecution.”
What???
Is Kappos actually suggesting that if I file in Canada first and wish to wait 5 years before demanding examination there, I don’t get an examination in the US for 5 years either???? And, no doubt, there will be no term adjustment, so I lose 5 years of US patent life.
I believe in most countries residents are required to file there first. And so now the length of that country’s backlog will determine how long it takes to get examination in US and how many years the patent is good for? That clearly prejudices applicants of foreign countries.
This rule would, in effect, force applicants to make decisions in prosecutions in other countries they do not wish to make. The applicant should be the one in control of his applications. If he wants to sit on the Canadian or EPO application while examination proceeds in the US, he should be the one making that call, not Kappos. This smells fishy to me.
Are we slipping backwards into Dudas-dementia-land?
I don’t believe this is a Paris violation because it is directed at applications not nationals (that is, facially it affects both US and non-US applicants equally). Kappos’ proposal seems a patent quality move–that is, to give Examiners some outside (meaning non-applicant) information as a starting point. As some of the commenters point out, with a potentially large shift in the way patent apps are currently filed.
For firms that handle mainly foreign origin, this would be a disaster. We could go out of business waiting for the next US office action.
As for the pseudo-reply to the foreign OA, this would assume that, for example, we understand the foreign patent laws. When addressing the formalities, I can imagine writing something like this: claim 1 was rejected under article 22 of the Taiwan patent law, which reads blah in the official English translation, the meaning of which is not known or understood. ROTFLMAO! This is not entirely hypothetical.
A simple solution would be just allow expedited examination base on a fee. We could handle the number of claims problem by making the fee per claim.
Assume the expedite fee was $5k per claim. Most, I believe, would request expedited examination of just one claim while filing the balance in a continuation that would be examined in due course.
Complaints that U.S. companies and inventors might get faster average patent application processing under this proposal than foreign companies unless they file here first is unlikely to get much public or political sympathy, since no one has factually challenged its legality. Especially given the many billions of dollars of revenue [and badly needed U.S. foriegn currency exchange] that U.S. companies are deprived of by rampant copyright and trademark infringements and various discriminatory-effect trade and customs practices in some of our major trading “partners.” Especially if the complaints are from law firms getting a great deal of their revenues from foriegn company clients.
This is all so silly. Just raise all PTO fees 15% across the board and use the extra money to reduce the backlog including computer upgrades, classification upgrades, better training and mentoring of newbie examiners, hiring additional examiners and doubling the size of the board.
The procedures for foreign-based applications were discussed at a PTO roundtable on SHARE. The PTO wants foreign-based applicants to file a preliminary response to the issues raised in the foreign Office Action in the U.S. case – address the issues that may be relevant to U.S. practice, explain that the other issues are not relevant, amend the claims if “102”-type art was cited, etc.
The idea is to take advantage of the foreign examination to yield “efficiencies” in the U.S. case – once the U.S. Examiner gets to the U.S. case, some of the foreign-raised issues will have been addressed/overcome, reducing the issues that will need to be raised in the U.S. case. That’s the theory anyway. Since U.S. Examiners will raise their own 112 issues and do their own prior art searches, I’m not convinced.
Yes, as has been noted before, many of the opponents of deferred examination in the U.S. do it themselves in Japan and/or via maxing PCT delays and/or by filing U.S. continuations instead of RCE’s, and do not seem concerned about long EPO and other pendencies. How that apparently inconsistent behavior can be explained is an interesting question.
But that is a separate issue from those who really do need an option of a simpler, safer, and faster issuance of some patents for obtaining venture capital, licensing, etc.
Can somebody explain to me why so few Applicants ask the EPO for expedited prosecution.
My guess is that in Europe you more or less have to decide between a granted patent and a pending application. In the US it’s much cheaper and easier to keep something pending for the heck of it, so it’s nice to get one patent allowed in a hurry.
Also, this:
2. In Europe, unlike in America, no competitor ever robs an Applicant of the inventions enabled by their WO and EP-A publications.
Max, you may be underestimating the capitalist spirit of the American people. Pure capitalism means you always steal something if there’s a profit to be had, and patents make patented inventions more valuable (and easier to copy) than they would otherwise be. That’s why the US needs treble damages as an additional deterrent, but the deterrent is ineffective when you know the patentee can’t sue you because he doesn’t have a patent yet.
Ever been to Ankh-Morpork? It’s kind of like that.
Can somebody explain to me why so few Applicants ask the EPO for expedited prosecution. It is free of charge and the EPO requires no reason to be given. Yet nobody ever asks for it. Is that perhaps because:
1. Unlike in America, people file at the EPO but don’t want the patent they requested?
2. In Europe, unlike in America, no competitor ever robs an Applicant of the inventions enabled by their WO and EP-A publications.
The pressure on the EPO to drive down pendency comes from scribblers on Wall Street and from politicians rather than from Applicants. Is it different in the USA?
“by initially placing all applications into what is now being called Track III.”
Po-TA-toe, Po-taa-toe.
We’ll get to them when we can, unless you pay us more and do some of the examination work yourself…
And this is different than currently available…how again (in a meaningful sense)?
We could solve the disparate treatment issue regarding the Paris Convention by initially placing all applications into what is now being called Track III. Exit from Track III could then require
— the expiration of 30 months;
— the payment of an expedited examination fee;
— a reply to a first action in a counterpart application; or
— the patenting of the invention in a counterpart application.
“based on a prior foreign-filed application, no action would be taken by the USPTO until the USPTO receives a copy of the search report, if any”
Man that would put a huge crimp in the examination order that we have in my art. That one move could make AU’s hurt for cases while the initial lag goes through and cases start rolling in with actions from other offices.
“While it is believed that most applicants will continue to file applications first in their national or regional office based on business needs or costs of translation, comment is also requested on whether the USPTO should anticipate a larger number of applications being filed at the USPTO first rather than an applicant’s national office”
I would have to say yes, at least a few. But, who cares? We effectively got rid of foreign priority in those cases which simplifies examination and makes everyone’s life so much easier. Amen to that. I hope everyone starts filing in the USPTO first even though the backlog might jump for a little while.
I spluttered into my coffee when I read Paul Morgan’s helpful observation above, that the UK-IPO already does home applications before it examines those of aliens.
News to me.
Until I am disabused of my hypothesis, I will suppose that Mr Kappos is being disingenuous, and is referring instead to the courtesy which the UK-IPO shows to those who file without declaring an earlier Paris Convention priority, of issuing a search report within the Paris year, which Applicant can use when drafting its PCT specification and claims. It isn’t a FAOM though, and I wouldn’t know how to “reply” to it, in USPTO format or in any other format.
As far as I know, Patent Offices in Europe have an examination waiting list arranged in order of priority dates declared. Those with the earliest filing dates get examined first, regardless whether they are domestics or aliens. In UK there is a statutory requirement on Applicant to get the app in order for allowance, and all divisionals from it on file within 54 months of the earliest declared priority date.
So, perhaps there is something here from Mr Kappos that breaches the “spirit of Paris” but hey, so what? Hilmer set a convenient precedent. Each breach is easier to contemplate than the last one.
And if the aliens retaliate? Does it really matter? Is expeditious issue of a patent, outside the USA, of any significance to anybody?
“This should be interesting as it gives us more choice over how to file, but I worry that it will result in a lot higher fees and that if we choose the current track, the backlog will end up being much longer, thus forcing us into the higher priced option.
Posted by: Patent Attorney – Pennsylvania, New York, New Jersey | Jun 07, 2010 at 10:17 AM”
Isn’t that the point? The Office cannot process what they have now. They can’t even hold their own ground.
So when this higher priced option comes available, it will be the new standard.
This is just a backdoor fee increase due to the actual situation at the office.
Dan Feigelson — Do you have a link or reference for Hal Wegner’s analysis? Paris was one of the concerns that came to my mind as well but I’d like to see other thoughts. Thank you.
I worry … that if we choose the current track, the backlog will end up being much longer,
I was going to mention that too, but I forgot. The article says the accelerated exam fee will be high enough that the backlog of middle-tier applications won’t increase, but I don’t see how any amount of money can achieve that when the PTO can’t seem to hire (or retain) examiners at all.
The subject PTO FR Notice says:
“..major patent filing jurisdictions like the Japanese and European patent office have already adopted office-driven systems in which they address first the applications for which they are the office of first filing.”
If true, this would seem to dispose of the Paris convention argument?
This should be interesting as it gives us more choice over how to file, but I worry that it will result in a lot higher fees and that if we choose the current track, the backlog will end up being much longer, thus forcing us into the higher priced option.
34. What word should we use instead of “request examination” so it doesn’t sound like we’re violating 35 USC 131?
I think this proposal has potential, but we all know someone who feels disadvantaged by it is going to complain.
Compare and contrast section 131’s “The Director shall cause an examination to be made of the application” with Canada’s statutory language: “The Commissioner shall, on the request of any person … and on payment of a prescribed fee, cause an application for a patent to be examined”.
7. Should the number of claims permitted in a prioritized application be limited? What should the limit be?
Anything between 3/20 and 4/30 is probably fine. Or better still, one independent of each type Euro-style.
12. Should the patent term adjustment (PTA) offset applied to applicant-requested delay be limited to the delay beyond the aggregate USPTO pendency to a first Office action on the merits?
How about using the aggregate pendency for the application’s art unit?
The Supreme Court published two decisions this morning. Sorry folks — no Bilski.
On reflection, I’m wondering now if Mr Kappos contemplates the following:
1. Alien Applicant gets from its home Patent Office a search report and an opinion on patentability
2. Applicant enters the USPTO with the app, a copy of that opinion and a “reply” in USPTO format.
To be charitable, I’m assuming that the aforesaid “reply in USPTO format” need never be filed at any Patent Office except the USPTO.
I refuse to believe that Mr Kappos is proposing that I must file my reply “in USPTO format” at the EPO before he will look at my client’s USPTO filing. But, given the tenor of previous US law-making, on the basis that:
“You aliens can file your priority application anywhere in the world you want but, if you want 102(e) protection, it has to be the USPTO”
I’m not sure.
Dennis, tell me I’m right, will you?
… if it isn’t an outright violation thereof – the PC provides for “national treatment”, i.e. that foreign originating applications are treated just like domestically originating applications …
That’s not quite what national treatment is. Paris requires that foreign applicants be treated just like domestic applicants. The origin of the application is a separate matter.
if the paris convention requires the US to examine applications earlier than the inventor’s home country, then we should work with these countries to modify the convention. The foreign inventors should expect the same treatment in this country that they get in their home country. So if Japan takes 8 years to write a first action for a Japanese application, then the US should take 8 years also.
The US has enough on its hands with its own PTO, the US cant be expected to reduce pendency for every patent office on the face of the earth.
“Dennis, must I cede to a US patent attorney the preparation of responses to objections made under the European Patent Convention? What I am getting at is; what does “in USPTO format” mean, in your Question 13 above (text repeated below):”
I’m not quite sure either.. but I can tell you that you’d be daft to amend your US claims because an EPO examiner made a clarity objection that would likely not be raises as a 112 here. I’m not sacrificing DOE that easily.
Yesterday Hal Wegner pointed out that the proposal to force foreign-origination applications to wait may effectively undermine the whole purpose of the Paris Convention (if it isn’t an outright violation thereof – the PC provides for “national treatment”, i.e. that foreign originating applications are treated just like domestically originating applications), and may trigger retaliation against US applicants abroad by other countries.
Will this bring a flood of applications into the USA? Absolutely – anyone who can file a US provisional first, who doesn’t already do so, will now avail himself of that option, so that his application doesn’t later languish in the USPTO. Here’s another for you: in Israel, if you get a favorable IPRP, that can be a basis for the ILPTO to allow your application. So if your first filing was in Israel, you got a favorable IPRP from the USPTO, you got your IL case allowed on that basis before first OA on the merits issued in Israel, and you then went into national phase in the USA, it would seem that under Mr. Kappos’ proposal, you’d never get the application examined in the USA, b/c there would never be a FOAM in the foreign country – even though the USPTO itself already indicated in the context of the IPRP that the claims were allowable!
The USPTO seems to be hung up on this foreign/US first filing thing – witness how the PPH is structured. In comparison to his predecessor’s suggestions for how to decrease prosecution time, Mr. Kappos’ ideas are teriffic. But this proposal about how to handle foreign-originating applications leaves much to be desired.
Dennis, must I cede to a US patent attorney the preparation of responses to objections made under the European Patent Convention? What I am getting at is; what does “in USPTO format” mean, in your Question 13 above (text repeated below):
“13.Should the USPTO suspend prosecution of non-continuing, non-USPTO first-filed applications to await submission of the search report and first action on the merits by the foreign office and reply in USPTO format?”
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