On June 4, 2010, the US Patent and Trademark Office (USPTO) published in the Federal Register a detailed call for comments and the announcement of a public meeting to discuss it’s proposed Three-Track patent processing initiative. Federal Register/ Vol.75, No 71/Friday, June 4, 2010/ notes.  The public meeting will take place at the USPTO office on July 20, 2010.

Under the proposed initiative, for applications filed first in the United States, an applicant may: (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).  As for applications filed in the USPTO that are based on a prior foreign-filed application, the proposed process is quite different.

According to  Jack O’Brien, founder of Law Offices of John A. O’Brien P.C. and Practice Center Contributor,  “All applications filed first in the United States can freely participate this three track system.  However, US patent applications based on a prior foreign filed application are delayed.”

For applications filed in the USPTO that are based on a prior foreign-filed application, no action will taken by the USPTO until the USPTO received in the U.S. application (1) A copy of the search report, if any; (2) a copy of the first action from the foreign office where the application was originally filed; and (3) an appropriate reply to the foreign office action.  Where the foreign action indicated that the foreign filed application was allowable, all that would be required for the appropriate reply would be notice to the USPTO.  Where one or more rejections were made in the foreign office action, applicant’s reply could include an amendment but would have to include arguments regarding why the claims in  the USPTO-filed application were allowable over the evidence relied upon in foreign  office action.

Mr. O’Brien explains, “following or concurrent with the submission of the foreign office action and reply applicant then, and only then, could request prioritized examination or obtain processing under the current procedure.  If the US application claims benefit of the foreign filed application ,and the relied upon foreign application is abandoned prior to action on the merits being made available, the 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.“

In IPWatchdog’s (Gene Quinn of IPWatchdog is also one of the Practice Center Contributors) recent post titled “ USPTO Announces New Examination Rules, Seeks Comment on 33 Questions”, when commenting on the foreign origin aspects of the Three-Track initiative, he writes:

“[T]he Patent Office believes the initiative will increase the efficiency of the examination by avoiding or at least reducing duplication of efforts by the office of first filing and the USPTO. The Patent Office points out that roughly one half of all applications the Office handles are filed first abroad, so any efficiencies and gains realized should result in substantial improvement in the USPTO’s performance. Also pointed out in the Notice was that other major patent offices, such as the Japanese and European patent offices, have already adopted office-driven systems in which they address first the applications for which they are the office of first filing.”

Under Track III, the applicants can request up to a 30 month delay in docketing for examinationI ordr to avoid delay in notice to the public, any appliatio requesting Track III must also be purlished 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 within thirty months from the filing date of the application or any relied-upon provisional application.  Failure to request examination within the 30-month period would result in abandonment of the application.

I recently asked Brandon Baum,  partner at Mayer Brown and Practice Center Contributor, why would an applicant actually want to slow down the patent process?  According to Mr. Baum:

“[O]ne reason applicants might 
prefer to go more slowly is that the applicant already has an issued
 patent from the application and is now pursuing a continuation, and Iis now in litigation and would like to “wash” the prior art that the 
accused infringer uncovers during discovery through the PTO — i.e.,
submit the art to the PTO in the prosecution of the continuation.  In 
addition, sometimes an applicant would like to see the industry mature 
before the patent issues, say, where the industry is deciding on a 
standard and the applicant is pursuing a patent that would apply to the
 patent.  The applicant might prefer that the application remain
 unpublished, and the patent unissued, until it is “too late” for the 
industry to change the design specification.

Small entities and solo inventors might prefer a cheaper/slower path so 
they can try to secure funding while pursuing the patent without 
incurring too high a “burn rate” on patent prosecution.  In industries 
where FDA approval is required, there might also be a reason to pursue a 
slower or faster track, depending on which FDA approval methodology is
 employed.“

When commenting on Track III, IPWatchdog writes, “While some may protest that this deferred examination I say, so what even if it is?  Why shouldn’t you be able to go at the pace you want?  There are some virtually held hostage by a slow patent system, and those that would prefer it to be slower, so why not let the market sort it out and allow the Patent Office to prioritize simply by giving patent applcicants the service they request?  What a novel concept.”

What are your thoughts on the Three-Track Patent intitiative?

Tags: Brandon Baum, federal Register, Foreign-filed patent applications, Gene Quinn, IPWatchdog, Jack O'Brien, Law Offices of John A. O'Brien, Maye Brown, Patent Applications, Proposed rules, PTO, Three-Track patent processing initiative, USPTO

This entry was posted on Tuesday, June 8th, 2010 at 19:09 and is filed under Patent Case Management, Patent Issues, Patent Litigation, Patent Prosecution, posts, USPTO. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.