Last month, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 59197) requesting written comments regarding two issues: (1) how the Office can better leverage other applications having the same or substantially the same disclosure as a U.S. application under examination to provide examiners with relevant information as early as possible, and (2) what information to include on the face of the patent now that processing and examination is conducted in an electronic environment. The notice also indicates that Office will be holding a roundtable to address these issues from 1:00 to 4:00 pm (EDT) on September 28, 2016 in the Madison Auditorium at the USPTO Headquarters in Alexandria, VA.
With respect to the first issue, the notice indicates that the Office has begun exploring how to best utilize available electronic resources to provide examiners with information -- such as prior art and search reports -- from an applicant's other applications as soon as possible in the examination process in order to increase patent examination quality and efficiency. According to the notice, "other applications" would include, for example, domestic parent and counterpart foreign applications. The notice states that automating the process "will reduce applicant's burden to provide this information to the USPTO."
The notice explains that the Office's work sharing efforts have resulted in the development of additional sources of information from foreign counterpart applications that are likely to be highly relevant to the examination of corresponding U.S. applications. One example of such a work sharing program is the Global Dossier, an initiative developed by the IP5 offices (USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People's Republic of China (SIPO)), which provides U.S. examiners and the public with access to the official file contents of counterpart foreign applications. However, the notice expresses concern that "too many applications, like too many items of information, might present large amounts of information that has no relevance to the application being examined," suggesting that "[t]he right balance of the scope of applications and information therein is critical to ensure examiners are provided with the most relevant information without overburdening them with immaterial and marginally relevant information." The notice also points out that while some applicants might prefer a fully automated system in which the Office monitors a set of applications that have been predefined by the Office, other applicants might prefer to define the set of applications themselves, and still other applicants might prefer to define both the set of applications and particular information to be imported from those applications.
With respect to the second issue, the notice seeks to eliminate potentially unnecessary information from the front page of the patent (besides the specification and drawings required by statute). The notice points out that any information that is eliminated from the face of the patent would still be accessible to the public via the Patent Application Information Retrieval (PAIR) system.
The notice sets forth five questions to be addressed at the roundtable and by those submitting written comments. Those questions are as follows:
1. In balancing the goals of examination quality and efficiency, should the USPTO monitor other applications, besides domestic parent and counterpart foreign applications, for relevant information located therein for consideration in the instant U.S. application? If so, which other applications should be monitored (e.g., siblings, applications involving the same or related technology, etc.)?
2. What is the most convenient way to bring an application to the USPTO's attention that should be monitored for information during the examination of a U.S. application (e.g., automated system, applicant notifies the USPTO, etc.)?
3. How should the USPTO determine which information from the monitored applications to provide examiners while ensuring they are not overburdened with immaterial and marginally relevant information?
4. If the USPTO were to import information from applicant's other applications, how should the USPTO document the information imported into the image file wrapper of the instant U.S. application? For example, should the record reflect which domestic parent or counterpart foreign application the information was imported from, the date that the information was imported, and whether the examiner considered the imported information?
5. Taking into consideration the information that is publicly available in PAIR, what information should be part of a patent? For example, should prior art references and classification information still be listed on the front page of a patent?
Written comments regarding the issues and questions presented in the notice must be submitted by October 28, 2016. Comments can be submitted by e-mail to PriorArtAccess@uspto.gov, or by regular mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Michael Neas, Deputy Director, International Patent Legal Administration.
Registration information for those wishing to attend or present at the roundtable can be found in the notice. Those wishing to attend the roundtable must register by September 21, 2016, and those wishing to present at the roundtable must register by September 14, 2016. The roundtable will also be webcast; instructions for viewing the webcast can be found here.
