Robert Hulse Discusses USPTO’s Patent Processing Initiative


I’m sure many of you are still trying to weed through the detailed call for comments on the USPTO’s Three-Track Patent Processing Initiative that was published in the Federal Register last week.  It will be interesting to see the comments that come in from the Patent Community and how the PTO’s proposal will evolve based on the comments.  I had an opportunity to ask Robert Hulse, partner at Fenwick & West, LLP and Contributor on the Patent Center, some general questions that I had regarding the PTO’s initiative:

Are you in favor of or opposed to Three-Track proposal?  Do you believe it’s an improvement from the one-size-fits-all patent system?

Generally, I think this proposal will be good for patent applicants, but I would caution that it is just a general proposal with no specific rules.  Once the PTO published the proposed rules for implementing the Three-Track system, we will have a better understanding of how beneficial the system will be for applicants and how likely this system is to achieve the PTO’s stated goals of reducing pendency while maintaining quality examination. 

 For example, the rules may impose a high fee or otherwise place onerous requirements on applicants to take advantage of the prioritized track, Track 1.  In this case, most applicants simply wouldn’t take advantage of Track 1, which would reduce the effectiveness of the program.  This is the case with the current accelerated examination procedure, which requires a supporting document (the Accelerated Examination Support Document, or AESD) that places a tremendous burden on the applicant. There are many other unanswered questions about how the different tracks will affect other aspects of the patent rules and laws.  For example, will applicants be required to publish all delayed (Track 3) applications, to prevent applicants from submarining a patent application?  Will the three-year delay add to the patent term or (more likely) will be counted as applicant’s delay and will thus shorten the enforceable life of the resulting patent? 

 That said, if implemented well, such that the options do not impose unreasonable burdens on applicants or otherwise adversely affect applications, the Three-Track system could be a valuable tool for both the PTO and patent applicants.

Will the Three-track program actually provide applicants greater control over the speed with which their applications are examined AND promote greater efficiency in the patent examination process?

The effect of the proposed program may very well lead to efficiencies and give applicants more control over the examination process, but again the effect of the program will depend on how it is implemented.  The obvious benefit to applicants is the additional choices of prioritizing or delaying an application.  As long as this choice isn’t effectively removed by unreasonable burdens, the program will give applicants greater control over the speed with which their applications are examined.  On the other hand, the added efficiency in the patent examination process will likely depend on how many applicants delay their applicants using Track 3.  The benefit will be realized if a significant portion of these applicants delay examination of their applications and ultimately decide not to pursue unwanted patent applications.  This will keep out of the examination queue the bulk of applications that were deemed important when filed but have otherwise become unimportant to the applicant–e.g., because the applicant’s business circumstances have changed or because the technology being protected is no longer valuable.

Do you believe that by giving applicants the ability to go faster or slower through the patent process will ultimately reduce the pendency of those patent applications that are most time sensitive?

The quickest of the three tracks will almost certainly lead to a faster examination process than the current average examination process.  Based on the PTO’s statement that the goal would be a final determination in the application (i.e., final rejection or allowance), the fastest track will likely be comparable with the current accelerated examination process. 

 One interesting related question is whether this system will reduce the pendency of Track 2 (i.e., normal) applications.  The answer to this question will likely depend on the frequency that applicants select Track 1 versus Track 3.  If  more applicants choose Track 3 than Track 1, then more applications will be pushed behind a Track 2 application in the queue than will be advanced ahead of the Track 2 application.  In this case, Track 2 applications may be examined more quickly.  However, the converse is also a possibility.

Why would an applicant want to slow down the patent process?  Can you give examples of when an applicant would prefer a slower patent process?

The goal of the slow track would not necessarily be to slow down examination, but rather to defer the start of examination for up to three years.  This delay would allow applicants to file applications to lock in earlier filing dates, and then decide at a later time whether to have the application examined and thus incur the costs associated with examination (including the PTO’s examination fee as well as attorneys fees for prosecuting the application).

Track 3 would likely be chosen much more frequently for applications in the life sciences as compared to applications involving computer software, electronics, and mechanical inventions.  This is because applicants in the life sciences often do not know which inventions are valuable until long after applications are filed, and delaying examination is not a harm because the early part of the term of a life sciences patent is often not as valuable as the end of the term.  However, some cash-strapped startup companies in other fields may still take advantage of Track 3. 

I would also observe that the efficiencies of the Three-Track system will be reduced due to the likely correlation of technology area and track selection.  For example, life sciences applications will likely be delayed more often, whereas computer software applications will likely be prioritized more often.  However, the examiners would examine computer software applications are not the same as those who examine life sciences applications.  Since examiners are not fungible, freeing up an examiner in one technology unit will not have an effect on examination in a different technology unit.

Under Track 1, an applicant will be required to pay a fee set to recover the cost to the agency of maintaining the planned pendency of non-prioritized applications while expediting the examination of the prioritized applications.  What do you think is a reasonable fee?

Although there may be some additional cost to the PTO of maintaining the planned pendency of non-prioritized applications while expediting the examination of the prioritized applications, this does not seem significant against the likely fees that will be charged for Track 1.  For example, if the PTO set the fees for Track 1 merely to cover the increased costs, the difference between Track 1 and Track 2 would likely be a few hundred dollars.  Instead of setting the fees to recover costs, the PTO will likely need to set fees high enough to be “painful” to applicants; otherwise, most applicants would gladly pay the small difference to prioritize their applications.  This would flood Track 1 and defeat the ultimate goal of the proposed program.  I’m not sure what the right difference would be, but something in the area of $4000 to $6000 (halved for small entities) seems right.  As part of this calculus, you have to keep in mind the average total cost to an applicant of preparing a patent application, which includes attorney’s fees in the general range of $8000 to $18,000 (which are very loose estimates).  The increased fee will need to be a not insignificant portion of the applicant’s total costs so that applicants will select Track 1 only for genuinely important applications.

What is your opinion on the proposal to provide for supplemental searches performed by other intellectual property granting offices at an applicant’s request?

I am always in favor of knowing as much as possible about the prior art during prosecution, so supplemental searches sound like a great idea.  Again, the benefit of such a system would depend on its implementation details.

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2 Responses to “Robert Hulse Discusses USPTO’s Patent Processing Initiative”

  1. BBaum says:

    Robert, what are your thoughts about the possibility that a patentee/plaintiff in ongoing litigation will be able to “slow track” (Track 3) its pending continuation applications in order to submit the defendant’s invalidity contentions to the USPTO?

    Also, will patentees be able to request non-publication of applications that are on the “slow track” and, if so, is this a good thing given that putative inventors in the art may see their later applications undone by these earlier applications?

  2. Robert Hulse says:

    To BBaum, assuming continuation applications will be eligible for the program, the strategy of slow tracking a continuation application may be very useful to applicants regardless of whether the parent patents are in litigation. Applicants often file continuation applications not to pursue any particular claims, but rather to preserve the opportunity to pursue claims at a later date. The slow tracking of these “unimportant” continuing applications that are currently clogging the patent system could have a very positive impact on reducing pendency in all technology centers at the USPTO. It would also reduce the number of continuation applications that applicants must file to preserve a “continuation strategy.”

    To your second question, we will have to wait and see how the rules implement the program. I raised this open question in the original post, regarding whether applicants would be required to allow Track 3 applications to publish. On the one hand, requiring publication of Track 3 applications would prevent the hiding of patent applications from the public while those applications are intentionally delayed in the USPTO. (Note, however, that there are other mechanisms to do this now.) However, such a rule would also discourage some applicants from taking advantage of the program, which would reduce the effectiveness of the program. So, I suspect that a rule forcing Track 3 applications to publish would be fairly controversial, with strong opinions on each side.

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