Action:
The United States Patent and Trademark Office (USPTO) should move to a Multi-Track
Examination Process to allow the USPTO to better leverage search results
from foreign intellectual property offices (IPOs) and qualified contractors
called Contractor Search Service (CSS) organizations.
Background Information:
Although the USPTO's standard operating procedure in administering the
intellectual property laws has a continuous tradition stretching back to
the founding
of the republic, the economic environment in which it undertakes its mission
has changed in the past decade. Technological innovation and the marketing
of new goods and services have increasingly driven U.S. economic growth. This
has led to prolonged rapid growth in demand for the USPTO's principal products
- patents and trademark registrations.
The USPTO has undertaken major projects to address these workload challenges. Nevertheless,
the USPTO finds itself trying to catch up in its efforts to improve the quality
of patent examination and keep the time for making decisions on applications
at acceptable levels. While the current process has served us well, there
are numerous short-comings that, if unchanged, will not deliver the quality
patents in a timely manner that are needed to promote expansion of business
opportunities, stimulate research and development, and expand U.S. businesses
globally.
First, all applications are currently subject to the same processing criteria,
all applications are examined the same way and all claims are examined
in the same way in each application. Patent application filings in the complex
areas have been increasing, concentrating the growth in workload in the
high tech areas such as communications, computer hardware and software, and
biotechnology.
The Multi-Track Examination Process, outlined in the next several pages,
will reduce many of the current system's shortcomings and transform the current
system into a more efficient and effective patent system for all parties
involved.
Future Multi-Track Examination Process:
In this new system, the current single-track examination process is replaced
with an examination process that gives the applicant the option of choosing
between multiple examination tracks. In all tracks, the filing fee transaction would consist
of three components; a filing fee, a search fee, and an examination fee,
all due on filing (or within the period specified by the USPTO under the
current "missing parts" practice provided for in 37 CFR 1.53(f)). The
patent fee structure would be changed to authorize the USPTO to refund
a portion
of the search and examination fees if the application is expressly abandoned
prior to an examination on the merits, refund a portion of the search fee
if the applicant submits a qualified search report from an IPO with which
the USPTO has a bilateral search exchange agreement, and refund a portion
of the excess claims fees for claims that are canceled prior to an examination
on the merits.
The first track would be for national
applications (non-Patent Cooperation Treaty (PCT) applications) or PCT
National Stage applications in which no previous search has been done
that the USPTO can exploit. A USPTO employee would conduct the search and examination
of Track 1 applications. The second track, similar to the Track
1, would be for national applications (non-PCT applications) in which no
previous search has been done that the USPTO can exploit. However, the
examination of Track 2 applications would be based upon an international-style
search report (ISSR) prepared by a CSS engaged by the USPTO. It would
give the applicant the option of expressly abandoning the application
after seeing the results of the search report, and the patent fee structure
would
provide that the USPTO could refund a portion of the examination fee.
The third track would be for national
applications (non-PCT applications) for which a search has been performed
either in a counterpart application that was previously filed in another
intellectual property office (IPO) with which the U.S. has a bilateral search
exchange agreement, or
for applications in which the invention has been previously searched
by the USPTO. Examination of a Track 3 application would be primarily based
upon an international style search report (ISSR) prepared by the IPO
and provided to the USPTO or a prior USPTO search. To account for not
having to completely duplicate the search, the patent fee structure would
provide that the USPTO could refund a portion of the search fee if the
applicant provides a search report from an IPO with which the USPTO has
a bilateral agreement governing the provision and use of search reports, and when
the applicant has not presented new or amended claims which necessitate
a further search by the USPTO. Exploitation of searches from IPOs would
be tested and piloted in a step-by-step process to ensure proof of concept
(see paper Work Sharing 1 (P-36) on exploitation of search results).
The fourth track would be for the international
stage of PCT applications filed in the USPTO as the Receiving Office. The
National Stage entry of a Track 4 PCT application would become a Track
5 application,
in which examination would be primarily based upon the prior art listed
in the ISR prepared by the USPTO, or its contractor, acting
as an international searching authority (ISA) and/or an international
preliminary examination report (IPER) prepared by the
USPTO as an international preliminary examination
authority (IPEA).
The fifth track would be for U.S. National Stage entry
of PCT applications in which the ISR
and/or IPER
was done by either the USPTO or an IPO with which the U.S. has a bilateral
search exchange agreement. The examination of a Track 5 National Stage
PCT application would be primarily based upon the results of the ISR/IPER
done in the International Stage of the application.
The new Multi-Track Initiative combined
with quality enhancement initiatives will improve quality and pendency.
The advantages of the Multi-Track Initiative
are:
Quality: Concurrently, a series of quality enhancement initiatives
will be implemented. The details of initiatives for quality improvement
are set forth in other Issue Papers: Transformation 5 (P-07), Quality
1 (P-17), Transformation 7 (P-19), Transformation 9 (P-20), Transformation
10 (P-21), and Transformation 11 (P-23).
Efficiency: The ability to exploit high-quality search reports
generated by competent searching authorities.
Pendency: By reducing the search burden in Tracks 2-5, examiners will spend less time with the
searching function. We estimate that in these Track 2-5 applications, examiners will gradually increase
productivity over the next five years and therefore reduce pendency. Quality
assurance and certification procedures will ensure accurate search results.
The USPTO would develop a quality assurance
system in order to ensure the reliability of any ISR prepared by another
IPO or an ISSR prepared by a CSS or another IPO. See papers Quality
8 (P-07-01), Flexibility 2 (P-28) and Work Sharing 1 (P-36).
I Detailed Explanation Track 1 - USPTO Conducts
In-House Search of the Application.
The first track would be for national
applications (non-PCT applications) or applications under the National
Stage of PCT in which no previous search of the invention has been done
that the USPTO can reliably exploit. A
USPTO employee would conduct the search and examination of Track 1 applications. The
expectation is that over the course of the strategic plan, the number
of applications examined in this track will diminish as more searches
are
contracted by the USPTO to
a CSS (see Track 2).
The patent fee structure would authorize the USPTO to refund a portion of
fees paid for excess claims, search and examination if the application is
abandoned prior to the search and examination.
In the near-term, the USPTO plans to continue to conduct
in-house searches of applications by USPTO employees. First, the USPTO would
need to initially pilot the plan to examine an application primarily on the
basis of a search report acquired from a CSS. Such a pilot would be necessary
to prove the concept before changing the patent examination process to make
examining applications primarily on the basis of CSS search reports a routine
practice. Second, once examining applications primarily on the basis of
CSS search reports were proven to be a success, the process of changing from
examining applications on the basis of in-house searches conducted by the
examiner to examining applications primarily on the basis of CSS search reports
would gradually increase over time and eventually predominate. The USPTO
will continue to conduct in-house searches of practically all applications
in the near term.
Highlights of the first track are:
· Applicant
pays the filing, search, and examination fee on filing, but has the option
of expressly abandoning the application before the search and examination
and obtaining a refund on a portion of the fees paid for excess claims,
search and examination.
· A
USPTO employee would conduct the search and examination.
· The
expectation is that over the course of the strategic plan, the number
of applications examined in this track will diminish as more searches are
contracted by the USPTO.
II Detailed Explanation
Track 2 - USPTO Acquires Search Report from Contractor Search Services
(CSS).
The second track, similar to the Track
1, would be for national applications (non-PCT applications) in which
no previous search has been done that the USPTO can reliably exploit. However,
the examination of Track 2 applications would be based upon an international-style
search report (ISSR) prepared by a CSS engaged by the USPTO. It would
include the option of the applicant expressly abandoning the application
after seeing the results of the search report, and the patent fee structure
would authorize the USPTO to refund a portion of the examination fee. The
expectation is that as more searches are contracted by the USPTO over the
course of the strategic plan, this will become the predominant track for
applications compared to examiners doing the search. This will in turn
reduce the number of applications examined under Track 1.
The USPTO plans to pursue contracting with multiple CSS organizations
to perform a search of the prior art according to the criteria set out in
enhanced
PCT guidelines augmented by the USPTO's guidelines for non-patent literature
searching. The CSS's work product would be monitored by the USPTO to ensure
that searches are produced according to these requirements and of sufficient
quality. The search report would be required to identify on a claim-by-claim
basis the most relevant PCT-style X and Y references cited and explain the
relevant section of references. Examination will be based upon the search
results obtained by the CSS, any other art submitted by the applicant, and
an updated search by the examiner. Supplemental searches, subject to supervisor
approval, would be done when the efficacy of the art provided in the CSS
search is questionable. See papers Quality 8 (P-07-01) and Flexibility
2 (P-28) regarding details of the USPTO contracting searches.
The patent fee structure would authorize the USPTO to set a search fee to
recover the cost of searching applications (either by acquiring a search
report from a CSS or by conducting an in-house search of the application).
Highlights of the second track are:
· Applicant
pays the filing, search, and examination fee on filing, but has the option
of abandoning the application after seeing the results of the search report,
and obtaining a refund on a portion of the examination fee. Applicant
also has the option of expressly abandoning the application before the
search and examination and obtaining a refund
on a portion of the fees paid for excess claims, search and examination.
· Testing
and piloting the ability to exploit search reports from a CSS to validate
the proof of concept will be done.
· The
examination is based upon an international-style search report (ISSR)
prepared by a CSS engaged by the USPTO, as updated by the examiner and supplemented
subject to supervisory approval to the extent appropriate.
· The expectation is that as more
searches are contracted by the USPTO over the course of the strategic plan,
this will become the
predominant track compared to examiners doing the search (Track 1), which
will allow the USPTO to realize a productivity gain.
III Detailed Explanation Track 3 - Applicant Provides
Search Report from an IPO having a bilateral agreement with the USPTO or prior application at USPTO
can be relied upon.
The third track is designed to eliminate search effort
redundancy for national applications (non-PCT applications) for which a
counterpart application claiming the same
invention was previously
filed in the USPTO or in an IPO with which the U.S. has a bilateral
agreement. Forty-five percent of the USPTO's non-provisional application
filings are based on foreign origin applications, and eliminating the existing
practice of duplicating the prior art search will reduce the Office cost
and resource needs. Before this track is fully implemented, the USPTO will
test and pilot the efficacy of exploiting search reports from other sources,
taking a gradual step-by-step approach to validate the proof of concept. The
plan would include a pilot exchange program, then a testing and piloting
of increasing
degrees of exploitation (see paper Work Sharing 1 (P-36)).
There would have to be a bilateral agreement between the
USPTO and the other IPO to assure the quality requirements of search reports
are met as a pre-condition of implementing this track. When Track 3 is available,
if the USPTO is the IPO of second filing, the applicant may choose Track
3 if the search of the foreign counterpart (origin) application has been
performed by the IPO of first filing before the U.S. examiner picks up the
U.S. application for examination. Examination of a Track 3 application would
be primarily based upon the prior art listed in the international style search
report (ISSR)
prepared by the IPO and provided to the USPTO. The patent fee structure
would provide that the USPTO could refund a portion of the search fee if
the applicant provided a search report from an IPO with which the USPTO
has a bilateral agreement.
The U.S. would have established bilateral agreements with
a number of foreign IPOs that would establish the criteria for searching
and claim-by-claim analysis. The criteria would be that which would best
promote the use of the efforts by a first IPO in a second IPO's examination,
and would qualify an IPO to perform those tasks. The office of first filing
would provide a high quality search and report or ISSR for use with the IPOs of subsequent filings. The
order of examination of U.S. applications will remain unchanged
1. In particular, applications in
this track will not be given preferential treatment in the order of examination
of the U.S. application. However, the applicant may request expedited examination
by the foreign IPO such that the application would be searched and examination
completed by the foreign IPO prior to the application being taken up for
examination by the USPTO. Examination will be based upon the search results
obtained from the office of first
filing, any other art submitted by the applicant, and an updated search by
the examiner. Supplemental searches, subject to supervisor approval, would
be done when the efficacy of the art provided in the search by the office
of first filing is questionable.
Quality Assurance: A provision of the bilateral agreement
would be that an In-Process Review by the nation of subsequent filing would
evaluate the quality of the search results provided by the IP office of the
first filing. A statistically valid sample of cases would be reviewed using
criteria such as, whether the search was based on what is claimed and reasonably
expected to be claimed. Sanctions for failure to provide high quality
results might result in loss of qualified status.
Treatment of amendments and prior art under 35 U.S.C. § 102(e):
Any ISSR
would be required to be
based on a broad enough search to uncover
prior art related to any subject matter that is likely to be claimed. However,
a prior art search of newly issued patents or published U.S.
or international applications that have published since the date
of the ISSR would
need to be done by the USPTO when reviewing an application for the first
time or when amended claims were submitted. Where different claims were
submitted, the examiner in his/her discretion might perform a supplemental
search as appropriate and subject to supervisory approval. Amendments
that narrow claims, or filing of a continuation application with narrower
claims
should rarely require a supplemental search.
The USPTO plans to test and pilot, step-by-step, the level
of reliance that can be given to the examination conducted by foreign IPOs
(see paper Work Sharing 1 (P-36)). In anticipation of the future achievement
of substantive patent law harmonization, the results of the USPTO testing
and piloting will help harmonization efforts in the determination of shared
exploitation of search results. The patent fee structure would provide that
the USPTO could refund a portion of the search fee when such an ISSR were provided. This
provision would come into effect when the USPTO had determined that the
IPO searches are sufficiently reliable according to USPTO standards and
might
be used to reduce the USPTO search burden after proving this concept by
appropriate testing and piloting.
Highlights of the third track are:
· Applicant pays the filing, search,
and examination fee on filing, but receives a refund of a portion of the
search fee if
the applicant provides an ISSR from either an
IPO with which the USPTO has a bilateral agreement or if the USPTO has
conducted a search of a prior application that can be relied upon.
· The USPTO will test and pilot the ability to exploit
search reports from other sources, taking a gradual step-by-step approach
to validate the proof of concept.
· Examination
will normally be based on prior art listed on an ISSR, as updated by
the examiner and supplemented, with supervisory approval, to the extent appropriate.
IV Detailed Explanation Track 4 - USPTO Acting
as an ISA and/or IPEA
Provides Search Report and/or Examination Report for a PCT Application.
The fourth track would be for the International Stage of PCT
applications filed in the US/RO in which the USPTO, or its contractor,
performs the ISR. If the USPTO or its contractor performs
a search during the International Stage for the PCT under Track 4, any resulting
National Stage application would be a Track 5 application. The examination
of the National Stage under track 5 would be primarily based upon the art
listed in the ISR and/or IPER prepared by
the USPTO. This is current USPTO procedure.
As the USPTO expects to contract an increasing amount of PCT
international stage work, this will diminish the USPTO's need to use examiner
resources in this area.
Track 4 would also include International Stage PCT applications
that claimed priority to an earlier filed U.S. non-provisional application
that is under Track 1 or 2. In these situations, the ISR and any IPER for
the PCT application would be based upon the search and/or examination
conducted in the earlier filed U.S. non-provisional application. For other
PCT applications there would be an increased international search fee because
the USPTO will need to conduct a search or have a search conducted. Any
applicant in a national
application that might file a request that the USPTO provide an ISR might
instead just file an international application. Thus, if the USPTO serves as the ISA, a search
will be provided by the USPTO acting as an ISA. Note: the USPTO plans to
pursue competitive sourcing of PCT Chapter I searches. See paper Flexibility
2 (P-28).
Any ISR or IPER resulting from Track 4 would be provided to
the USPTO for use as the primary source of prior art to consider during
the examination of the succeeding national stage under Track 5. Full recognition
for the ISR or IPER would be provided, supplemented to the extent appropriate
if allowable subject matter is found. The search fee set for international
applications will be set to recover the actual cost of the service.
Highlights of the fourth track are:
· An
examination fee set to recover cost for contracted searches and their
review during the International stage will be charged, which is anticipated
to be larger
than the comparable EPO fee, while a lower examination fee during the
national stage will be charged.
· Examination
under the National Stage of PCT will be based primarily on prior art
cited by the United States International Searching Authority and/or International
Preliminary
Examination Authority (under Track 5).
V Detailed Explanation Track 5 - National Stage
Entry under PCT with the ISR and IPER (if
any) done by either USPTO or EPO or other IPO with
which the U.S. has a bilateral search exchange agreement.
The fifth track would be for the National Stage entry under PCT when the
ISR and IPER (if any) are done by the USPTO or EPO or other IPO with
which the U.S. has a bilateral search exchange agreement. Examination
of a Track 5 National Stage PCT application would be primarily based upon
the
prior art listed in the ISR and the IPER (if
any) prepared by the USPTO or EPO or IPO with
which the U.S. has a bilateral search exchange agreement. Examination will be based upon the results of
the ISR and IPER (if any), any other art
submitted by the applicant, and an updated search by the examiner. Supplemental
searches, subject to supervisor approval, would be done when the efficacy
of the art provided in the ISR and IPER (if any) is questionable.
The patent fee structure would provide that the USPTO
could refund a portion of the search fee when the USPTO can exploit the previous
ISR and IPER (if any).
When a National Stage entry under the PCT that is filed in the USPTO is
based upon an ISR/IPER not performed by the USPTO or EPO, or resulting from
foreign PCT
Application that the USPTO cannot exploit, no search refund will be available
(equivalent to Track 1). When an ISR is received from a country or an
IPO with which the USPTO does not have a bilateral search exchange agreement,
it would be treated similarly to an information disclosure statement
(IDS).
The USPTO plans to test and pilot, step-by-step, the level
of reliance that can be given to the examination conducted by foreign IPOs
(see Track 3 and paper Work Sharing 1 (P-36)). If other IPOs qualify under
a bilateral search exchange agreement, ISR/IPERs from the IPOs may also qualify
under Track 5. This provision would come into effect when the USPTO had
determined that the IPO searches are sufficiently reliable according to
USPTO standards and might be used to reduce the USPTO search burden after
proving
this concept by appropriate testing and piloting.
Highlights of the fifth track are:
· Applicant
pays the National Stage filing, search, and examination fee on filing,
but receives a refund of the search fee if the ISR/IPER is prepared by
the USPTO or an IPO with which the USPTO has a bilateral search exchange
agreement. In addition, if USPTO provides an
IPER a portion of the examination fee may be refunded under certain conditions.
· Testing
and piloting the ability to exploit ISR/IPERs from other IPOs, taking
a gradual step-by-step approach to validate the proof of concept will also
occur.
· Examination
will normally be based on prior art listed on ISR/IPER, as supplemented
to the extent appropriate if allowable subject matter is found.
Statutory Changes Suggested for the Multi-Track
Examination Process:
A draft bill and section-by-section analysis for the changes
to implement this multi-track examination process are included as part of
The 21st Century Strategic Plan.
USPTO Recommended Course of Action:
· Adopt
a multi-track examination system and fee structure predicated on whether
an examination is for a PCT or non-provisional application, and on whether
a search report is provided by an IPO with which the USPTO has an agreement
to exploit search reports or if the USPTO has already conducted an exploitable
search.
Develop
a plan to prove the concept of exploiting ISRs and ISSRs from non-USPTO IPOs.
·
1 Non-provisional
patent applications are to be taken up for examination by the examiner
to whom they have been assigned in filing date order in most cases (35
U.S.C. § 371 date in the case of the national stage of a PCT international
application, or effective filing date in the case of a continuation or
divisional application) (MPEP 708)). However, a patent application may
be accorded special status and advanced out of turn for examination if
the applicant files a petition under 37 CFR 1.102 to have the USPTO accord
special status to the application (MPEP 708.01 and 708.02).
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