Enhanced Examination Timing Control Initiative; Notice of Public Meeting, 31763-31768 [2010-13244]
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Federal Register / Vol. 75, No. 107 / Friday, June 4, 2010 / Notices
metal subject to AD/CVD orders, activity
under the proposed restricted approval
would provide REC Silicon with the full
savings estimated in the application.
The company has indicated that those
savings would enhance the cost
competitiveness of its Washington
facility, which would help to encourage
continued production and employment
at the facility.
Public comment on the preliminary
recommendation and the bases for the
finding is invited through July 12, 2010.
Rebuttal comments may be submitted
during the subsequent 15-day period,
until July 27, 2010. Submissions
(original and one electronic copy) shall
be addressed to the Board’s Executive
Secretary at: Foreign-Trade Zones
Board, U.S. Department of Commerce,
Room 2111, 1401 Constitution Ave.,
NW., Washington, DC 20230.
For further information, contact
Elizabeth Whiteman at
Elizabeth.Whiteman@trade.gov or (202)
482–0473.
Dated: May 28, 2010.
Andrew McGilvray,
Executive Secretary.
[FR Doc. 2010–13455 Filed 6–3–10; 8:45 am]
BILLING CODE 3510–DS–P
DEPARTMENT OF COMMERCE
Foreign-Trade Zones Board
[Docket 20–2009]
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Foreign-Trade Zone 29; Application for
Subzone Authority; Dow Corning
Corporation; Invitation for Public
Comment on Preliminary
Recommendation
The FTZ Board is inviting public
comment on its staff’s preliminary
recommendation pertaining to the
application by the Louisville and
Jefferson County Riverport Authority to
establish a subzone at the Dow Corning
Corporation (Dow Corning) facilities in
Carrollton, Elizabethtown and
Shepherdsville, Kentucky (Docket 20–
2009). The staff’s preliminary
recommendation is for approval of the
application with a restriction
prohibiting admission of foreign status
silicon metal subject to an anti-dumping
duty (AD) or countervailing duty (CVD)
order. The bases for this finding are as
follows:
Analysis of the application record
indicates that full approval of the
request could negatively impact
domestic silicon metal production. This
finding is based primarily on the
potential impact to domestic silicon
metal prices from the volume of
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production involved and the cumulative
impact of multiple applications
potentially involving avoidance of AD/
CVD duties on silicon metal used in
export production.
Dow Corning is a major U.S.
consumer of silicon metal, and access to
the material for its export production
without the payment of AD/CVD duties
would decrease the average price of
silicon metal paid by the company,
providing a new, lower benchmark to be
used in supply negotiations. Given the
volume of silicon metal consumed by
the company in the U.S., the ripple
effect on silicon metal suppliers could
be significant and the likely resulting
impact would be a decline in the U.S.
price of silicon metal.
Currently, very little silicon metal
subject to AD/CVD orders is imported
into the United States. However, due to
the size of Dow Corning’s production in
the U.S., and the amount of silicon
metal consumed by the company’s
operations, the potential increase in
supply to the U.S. market and resulting
price effect would likely be significant.
In part due to the AD/CVD duties in
place, U.S. silicon metal prices have
increased. This has led to the recent
restarting of a shuttered silicon metal
production facility in New York. A
weakening of the U.S. price of silicon
metal could threaten the viability of this
facility as well as the continuation of
production at other domestic facilities.
The preliminary recommendation also
reflects the cumulative effect on
domestic silicon metal prices and on the
integrity of the domestic silicon metal
industry’s AD/CVD relief should there
be multiple applications to avoid AD/
CVD duties on silicon metal for export
production. In addition to the Dow
Corning application, a similar
application is pending for REC Silicon
in Moses Lake, Washington and we have
received indication that further requests
are being prepared for additional
facilities.
Given the volume of silicon metal
involved in the current and anticipated
applications, even a limit on the amount
of silicon metal subject to AD/CVD
orders that could be used in the
facilities for export production could
have a significant impact on the U.S.
price of silicon metal. The timing of that
impact would also be occurring as
domestic silicon metal production
facilities are recovering and restarting,
likely due (at least in part) to the relief
provided through the AD/CVD orders
that are in place. The FTZ regulations
require that evaluations of
manufacturing authority consider,
‘‘whether the approval is consistent with
trade policy and programs, and whether
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31763
its net economic effect is positive’’ (15
CFR 400.31(a)). In this case, given the
potential impact on the silicon metal
industry and based on the evidence
currently on the record, the staff is
unable to find that the net (national)
economic effect of approving the use of
silicon metal subject to AD/CVD orders
for export production would be positive.
While unrestricted approval could
have a negative impact, the issues raised
do not extend to silicon metal not
subject to AD/CVD orders. No
arguments or evidence have been
presented to the FTZ Board in
opposition to FTZ savings on silicon
metal not subject to AD/CVD orders and
on other imported components. Such
savings would allow for duty deferral,
inverted tariff, scrap and export savings
on imported silicon metal and other
components not subject to AD/CVD
orders. In addition, the facilities could
benefit from logistical savings involved
in FTZ operations. The savings from
restricted approval would constitute a
significant portion of those projected in
the application and could help
encourage continued production and
employment at Dow Corning’s Kentucky
facilities.
Public comment on the preliminary
recommendation and the bases for the
finding is invited through July 12, 2010.
Rebuttal comments may be submitted
during the subsequent 15-day period,
until July 27, 2010. Submissions
(original and one electronic copy) shall
be addressed to the Board’s Executive
Secretary at: Foreign-Trade Zones
Board, U.S. Department of Commerce,
Room 2111, 1401 Constitution Ave.,
NW., Washington, DC 20230.
For further information, contact
Elizabeth Whiteman at
Elizabeth.Whiteman@trade.gov or (202)
482–0473.
Dated: May 28, 2010.
Andrew McGilvray,
Executive Secretary.
[FR Doc. 2010–13454 Filed 6–3–10; 8:45 am]
BILLING CODE 3510–DS–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
[Docket No.: PTO–P–2010–0035]
Enhanced Examination Timing Control
Initiative; Notice of Public Meeting
AGENCY: United States Patent and
Trademark Office, Commerce.
ACTION: Notice of public meeting;
request for comments.
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Federal Register / Vol. 75, No. 107 / Friday, June 4, 2010 / Notices
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SUMMARY: This notice announces a
public meeting to solicit public
opinions on an initiative being
considered by the United States Patent
and Trademark Office (USPTO) to
provide applicants with greater control
over when their applications are
examined and to enhance work sharing
between intellectual property offices.
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.
This initiative aims both to provide
applicants with the type of examination
they need and to reduce the overall
pendency of patent applications (which
currently stands at almost three years).
Overall pendency would be decreased
in three ways: (1) Increased resources in
Track 1 would result in increased
output; (2) reuse of search and
examination work done by other offices
would result in greater efficiency; and
(3) applicants who chose Track III
because their applications were of lower
value might ultimately decide not to
pursue their application examination
efforts that had been expended on the
applications. As a part of the threetracks, an applicant may request and
pay for a supplemental search from a
participating intellectual property
granting office. Any member of the
public may submit written comments on
this initiative being considered by the
USPTO.
DATES AND TIMES: The public meeting
will be held on July 20, 2010, beginning
at 1:30 p.m.
Persons interested in attending the
meeting must register by 5 p.m. Eastern
Standard Time (EST) on July 16, 2010.
Written comments must be submitted
by August 20, 2010.
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The public meeting will be
held at the USPTO, in the South
Auditorium of Madison West, 600
Dulany Street, Alexandria, VA 22314.
Written comments should be sent by
electronic mail message over the
Internet addressed to
3trackscomments@uspto.gov. Comments
may also be submitted by mail
addressed to: Mail Stop CommentsPatents, Commissioner for Patents, P.O.
Box 1450, Alexandria, VA 22313–1450,
marked to the attention of Robert A.
Clarke. Although comments may be
submitted by mail, submission via email to the above address is preferable.
The written comments will be
available for public inspection at the
Office of the Commissioner for Patents,
located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia,
and will be available via the USPTO
Internet Web site (address: https://
www.uspto.gov). Because comments will
be made available for public inspection,
information that is not desired to be
made public, such as an address or
phone number, should not be included.
ADDRESSES:
FOR REGISTRATION TO GIVE A
PRESENTATION IN THE MEETING:
If you
wish to make an oral presentation at the
meeting, you must register by sending
an e-mail to the e-mail address,
3trackscomments@uspto.gov, by 5 p.m.
EST on July 13, 2010. See the
registration information provided
below.
FOR FURTHER INFORMATION CONTACT:
Robert A. Clarke ((571) 272–7735),
Deputy Director, Office of Patent Legal
Administration, directly by phone, by email to Robert.Clarke@uspto.gov, or by
mail addressed to: Mail Stop CommentsPatents, Commissioner for Patents, P.O.
Box 1450, Alexandria, VA 22313–1450.
For further information on
supplemental searches, contact Mary
Critharis, 571–272–8468, Senior Patent
Counsel, External Affairs, directly by
phone, or by e-mail to
Mary.Critharis@uspto.gov.
SUPPLEMENTARY INFORMATION: This
notice announces a public meeting to
solicit public opinions on an initiative
being considered by the USPTO to
provide applicants with greater control
over when their applications are
examined and to promote greater
efficiency in the patent examination
process. For applications filed in the
USPTO which are not based on a prior
foreign-filed application (e.g., that do
not claim foreign priority benefit under
35 U.S.C. 119(a)–(d)), an applicant
could: (1) Request prioritized
examination; (2) for non-continuing
applications, request an applicantcontrolled delay lasting up to 30 months
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prior to docketing for examination; or
(3) obtain processing under the current
procedure 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
received, in the U.S. application: (1) A
copy of the search report, if any; (2) a
copy of the first office action from the
foreign office where the application was
originally filed; and (3) an appropriate
reply to the foreign office action. Where
the foreign office 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 the foreign office action.
Following or concurrent with the
submission of the foreign office action
and reply, applicant could request
prioritized examination or obtain
processing under the current procedure.
This proposal would increase the
efficiency of the examination of these
applications by avoiding or reducing
duplication of efforts by the office of
first filing and the USPTO. Because
efficiency gains are anticipated in the
roughly one half of all applications that
are filed first abroad, the result should
be substantial improvement in the
USPTO’s performance. By contrast,
under the PTO’s primary current
mechanism for worksharing, the patent
prosecution highway program, scaling
up has been limited by the fact that it
remains voluntary and can only be
utilized in situations where the USPTO
has not already begun its examination
work. Perhaps for this reason, 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.
Since the requirement to provide a
copy of the search report, first action
and an appropriate reply is being
considered to avoid or reduce
duplication of effort, the USPTO seeks
comment on whether this requirement
should be limited to first filings at
offices that have qualified as
international searching authorities
under PCT Article 16. In addition, in
order to avoid delays in disclosure, the
USPTO seeks comment on whether the
requirement to provide a copy of the
search report, first action, and an
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appropriate reply (which would result
in examination delay at the office of
second filing) should be limited to
applications that are published.
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?
The idea of office-driven worksharing,
or SHARE (‘‘Strategic Handling of
Applications for Rapid Examination’’)
has already been the subject of some
public commentary.
On October 21, 2009, the USPTO
published a Notice in the Federal
Register inviting the public to submit
written comments and participate in a
roundtable discussion on work sharing.
See Request for Comments and Notice
of Roundtable on Work Sharing for
Patent Applications, 74 FR 54028
(October 21, 2009). Many of the
comments regarding SHARE raised the
concern that delayed examination of the
foreign origin applications may work a
disadvantage to USPTO first filers with
respect to the patent term adjustment
(PTA) that may accrue. This concern
could be addressed by giving all
applicants some control on when their
application is examined so that the
applicant can best benefit from the
patenting process. Specifically, under
the current proposal, those who file first
in a foreign office can choose
subsequently to accelerate in the
USPTO. Some were also concerned that
SHARE would only work well if
coordinated with other offices. The
coordination has already started with
some offices. For example, the USPTO
and the Korean Intellectual Property
Office (KIPO) are conducting a smallscale pilot to gather empirical data and
test the feasibility of the SHARE
concept. More recently, the USPTO and
the United Kingdom Intellectual
Property Office (UKIPO) committed to
develop a plan to optimize reuse of
work on patent applications that are
jointly filed with the USPTO and
UKIPO.
Others suggested that the search or
examination fees be reduced or delayed.
The instant proposal permits deferral of
certain fees if Track III examination is
requested. Because many comments
focused on examination delays in the
office of first filing, comments to this
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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.
The USPTO also intends to
harmonize the existing examination
procedures for applications having been
granted accelerated or ‘‘special’’ status
including: (1) Applications under the
accelerated examination program; (2)
applications under the various patent
prosecution highway programs; (3)
applications advanced under other
programs under 37 CFR 1.102 (e.g.,
applicant’s age or health); or (4) national
stage applications advanced out of turn
because an international preliminary
examination report (IPER) prepared by
the United States International
Preliminary Examining Authority or a
written opinion on the international
application prepared by the United
States International Searching Authority
states that the criteria of novelty,
inventive step (non-obviousness), and
industrial applicability, as defined in
PCT Article 33(1)–(4), have been
satisfied for all of the claims presented
in the application entering the national
stage. The USPTO is holding a public
meeting and inviting public comments
to seek views on whether this initiative
should go forward and what changes
should be considered. Further meetings
may be announced by the USPTO, as
appropriate.
The USPTO recognizes that the
traditional ‘‘one-size fits all’’
examination timing may not provide
applicants much opportunity to choose
the examination timing they need.
Therefore, in addition to the current
standard procedure (Track II), the
USPTO is considering providing
applicants with greater ability to seek
prioritized examination (Track I) or, for
non-continuing applications that do not
claim the benefit of a prior foreign-filed
application, the ability to seek an
applicant controlled up to 30-month
queue prior to docketing for
examination (Track III). By allowing
applicants some control over the timing
of examination, it is anticipated that
examination resources would be better
aligned with the needs of innovators.
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
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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 nonprioritized 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
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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.
Traditional Timing (Track II):
Applications for which neither
prioritization nor an applicantcontrolled up to 30-month queue prior
to docketing for examination is
requested will be processed
traditionally, except that applicants may
request prioritized examination at any
time (e.g., on filing of a notice of appeal)
and, for any non-continuing application,
applicants may request an applicantcontrolled up to 30-month queue prior
to being placed on the docket for
examination on the merits. An
application that claims the benefit of a
prior-filed foreign application will not
be docketed for examination in Track II
until: (1) A copy of the search report, if
any, (2) a copy of the first action on the
merits by the intellectual property office
in which the priority application was
filed, and (3) a reply to that action in the
application filed at the USPTO has been
received.
An applicant-controlled up to 30month 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
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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 30month 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 30month 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 30month 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 nonpayment 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
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required fee) for prioritized examination
while the application is in the queue for
examination.
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.
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 priorfiled foreign application, and the reliedupon 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
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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.
The USPTO is also considering
negotiating with one or more
intellectual property granting offices
(IPGOs) to provide an optional service
for applicants at the USPTO to request
that the USPTO obtain from one or more
IPGOs a supplemental search report.
This supplemental search report will be
considered in preparation of the first
Office action on the merits by the
examiner. An additional search will be
conducted by the examiner at the
USPTO. This option would be subject to
the USPTO negotiating appropriate
agreements with one or more IPGOs.
The USPTO is also considering
providing a short period for applicant to
review and make any appropriate
amendments or remarks after the
supplemental search is transmitted prior
to preparing the first action.
Comments on one or more of the
following questions would be helpful:
1. Should the USPTO proceed with
any efforts to enhance applicant control
of the timing of examination?
2. Are the three tracks above the most
important tracks for innovators?
3. Taking into account possible
efficiency concerns associated with
providing too many examination tracks,
should more than three tracks be
provided?
4. 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.
5. 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
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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.
6. Should prioritized examination be
available at any time during
examination or appeal to the Board of
Patent Appeals and Interferences
(BPAI)?
7. Should the number of claims
permitted in a prioritized application be
limited? What should the limit be?
8. Should other requirements for use
of the prioritized track be considered,
such as limiting the use of extensions of
time?
9. Should prioritized applications be
published as patent application
publications shortly after the request for
prioritization is granted? How often
would this option be chosen?
10. Should the USPTO provide an
applicant-controlled up to 30-month
queue prior to docketing for
examination as an option for noncontinuing applications? How often
would this option be chosen?
11. Should eighteen-month patent
application publication be required for
any application in which the 30-month
queue is requested?
12. Should the patent term adjustment
(PTA) offset applied to applicantrequested delay be limited to the delay
beyond the aggregate USPTO pendency
to a first Office action on the merits?
13. Should the USPTO suspend
prosecution of non-continuing, nonUSPTO 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?
14. 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?
15. 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?
16. 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?
17. Should the requirement to provide
a copy of the search report, first action
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31767
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?
18. 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?
19. 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?
20. 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?
21. Should the USPTO offer
supplemental searches by IPGOs as an
optional service?
22. 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?
23. Would supplemental searches be
more likely to be requested in certain
technologies? If so, which ones and how
often?
24. Which IPGO should be expected
to be in high demand for providing the
service, and by how much? Does this
depend on technology?
25. Is there a range of fees that would
be appropriate to charge for
supplemental searches?
26. 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?
27. Should the search be required to
be conducted based on the U.S. prior art
standards?
28. Should the scope of the search be
recorded and transmitted?
29. What language should the search
report be transmitted in?
30. Should the search report be
required in a short period after filing,
e.g., within six months of filing?
31. How best should access to the
application be provided to the IPGO?
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srobinson on DSKHWCL6B1PROD with NOTICES
32. How should any inequitable
conduct issues be minimized in
providing this service?
33. 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?
Registration Information: The USPTO
plans to make the meeting available via
Web cast. Web cast information will be
available on the USPTO’s Internet Web
site before the meeting. The written
comments and list of the meeting
participants and their associations will
be posted on the USPTO’s Internet Web
site (https://www.uspto.gov).
When registering, please provide the
following information: (1) Your name,
title, and, if applicable, company or
organization, address, phone number,
and e-mail address; and (2) if you wish
to make a presentation, the specific
topic or issue to be addressed and the
approximate desired length of your
presentation.
There is no fee to register for the
public meeting and registration will be
on a first-come, first-serve basis. Early
registration is recommended because
seating is limited. Registration on the
day of the public meeting will be
permitted on a space-available basis
beginning at 1:30 p.m. Eastern Standard
Time, on July 20, 2010.
The USPTO will attempt to
accommodate all persons who wish to
make a presentation at the meeting.
After reviewing the list of speakers, the
USPTO will contact each speaker prior
to the meeting with the amount of time
available and the approximate time that
the speaker’s presentation is scheduled
to begin. Speakers must then send the
final electronic copies of their
presentations in Microsoft PowerPoint
or Microsoft Word to
3trackscomments@uspto.gov by July 16,
2010, so that the presentation can be
displayed in the Auditorium.
If you need special accommodations
due to a disability, please inform the
contact person (see FOR FURTHER
INFORMATION CONTACT) by July 16, 2010.
Dated: May 25, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2010–13244 Filed 6–1–10; 8:45 am]
BILLING CODE 3510–16–P
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COMMITTEE FOR PURCHASE FROM
PEOPLE WHO ARE BLIND OR
SEVERELY DISABLED
Procurement List Proposed Additions
and Deletions
AGENCY: Committee for Purchase From
People Who Are Blind or Severely
Disabled.
ACTION: Proposed Additions to and
Deletions From Procurement List.
SUMMARY: The Committee is proposing
to add to the Procurement List products
and services to be furnished by
nonprofit agencies employing persons
who are blind or have other severe
disabilities, and to delete services
previously furnished by such agencies.
DATES: Comments Must Be Received on
or Before: July 5, 2010.
ADDRESSES: Committee for Purchase
From People Who Are Blind or Severely
Disabled, Jefferson Plaza 2, Suite 10800,
1421 Jefferson Davis Highway,
Arlington, Virginia, 22202–3259.
FOR FURTHER INFORMATION OR TO SUBMIT
COMMENTS CONTACT: Barry S. Lineback,
Telephone: (703) 603–7740, Fax: (703)
603–0655, or e-mail
CMTEFedReg@AbilityOne.gov.
This
notice is published pursuant to 41
U.S.C. 47(a)(2) and 41 CFR 51–2.3. Its
purpose is to provide interested persons
an opportunity to submit comments on
the proposed actions.
SUPPLEMENTARY INFORMATION:
Additions
If the Committee approves the
proposed additions, the entities of the
Federal Government identified in this
notice will be required to furnish the
products and services listed below from
nonprofit agencies employing persons
who are blind or have other severe
disabilities.
Regulatory Flexibility Act Certification
I certify that the following action will
not have a significant impact on a
substantial number of small entities.
The major factors considered for this
certification were:
1. If approved, the action will not
result in any additional reporting,
recordkeeping or other compliance
requirements for small entities other
than the small organizations that will
furnish the products and services to the
Government.
2. If approved, the action will result
in authorizing small entities to furnish
the products and services to the
Government.
3. There are no known regulatory
alternatives which would accomplish
PO 00000
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Fmt 4703
Sfmt 4703
the objectives of the Javits-WagnerO’Day Act (41 U.S.C. 46–48c) in
connection with the products and
services proposed for addition to the
Procurement List.
Comments on this certification are
invited. Commenters should identify the
statement(s) underlying the certification
on which they are providing additional
information.
End of Certification
The following products and services
are proposed for addition to
Procurement List to be furnished by the
nonprofit agencies listed:
Products
Cold Weather, Polypropylene Undershirts
NSN: 8415–01–546–0124—Undershirt Size X
Small Short
NSN: 8415–01–546–0128—Undershirt Size X
Small Regular
NSN: 8415–01–546–0160—Undershirt Size
Small Short
NSN: 8415–01–538–8598—Undershirt Size
Small Regular
NSN: 8415–01–546–0166—Undershirt Size
Small Long
NSN: 8415–01–538–8614—Undershirt Size
Medium Regular
NSN: 8415–01–546–0305—Undershirt Size
Medium Long
NSN: 8415–01–538–8621—Undershirt Size
Large Regular
NSN: 8415–01–538–8701—Undershirt Size
Large Long
NSN: 8415–01–538–8705—Undershirt Size X
Large Regular
NSN: 8415–01–538–8711—Undershirt Size X
Large Long
NSN: 8415–01–546–0362—Undershirt Size X
Large X Long
NSN: 8415–01–546–0369—Undershirt Size
XX Large Regular
NSN: 8415–01–546–0370—Undershirt Size
XX Large Long
NSN: 8415–01–546–0374—Undershirt Size
XX Large X Long
NPAs: Knox County Association for Retarded
Citizens, Inc., Vincennes, IN.
Peckham Vocational Industries, Inc.,
Lansing, MI.
Contracting Activity: Defense Logistics
Agency, Defense Supply Center
Philadelphia, Philadelphia, PA.
Coverage: C-list for an additional 25% of the
requirements of the Department of
Defense as aggregated by the Defense
Supply Center Philadelphia.
Services
Service Type/Location: Custodial/Grounds
Services, Donna Border Station, U.S.
Highway 281 and FM 493, Donna, TX.
NPA: Mavagi Enterprises, Inc., San Antonio,
TX.
Contracting Activity: Public Buildings
Service, Building Services Team, Fort
Worth, TX.
Service Type/Location: Custodial Services,
FAA ARTCC Complex, 37075 Aviation
Lane, Hilliard, FL.
NPA: The Right 2 Work Corporation,
E:\FR\FM\04JNN1.SGM
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]]>Agencies
[Federal Register Volume 75, Number 107 (Friday, June 4, 2010)]
[Notices]
[Pages 31763-31768]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2010-13244]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0035]
Enhanced Examination Timing Control Initiative; Notice of Public
Meeting
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of public meeting; request for comments.
-----------------------------------------------------------------------
[[Page 31764]]
SUMMARY: This notice announces a public meeting to solicit public
opinions on an initiative being considered by the United States Patent
and Trademark Office (USPTO) to provide applicants with greater control
over when their applications are examined and to enhance work sharing
between intellectual property offices. 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.
This initiative aims both to provide applicants with the type of
examination they need and to reduce the overall pendency of patent
applications (which currently stands at almost three years). Overall
pendency would be decreased in three ways: (1) Increased resources in
Track 1 would result in increased output; (2) reuse of search and
examination work done by other offices would result in greater
efficiency; and (3) applicants who chose Track III because their
applications were of lower value might ultimately decide not to pursue
their application examination efforts that had been expended on the
applications. As a part of the three-tracks, an applicant may request
and pay for a supplemental search from a participating intellectual
property granting office. Any member of the public may submit written
comments on this initiative being considered by the USPTO.
Dates and Times: The public meeting will be held on July 20, 2010,
beginning at 1:30 p.m.
Persons interested in attending the meeting must register by 5 p.m.
Eastern Standard Time (EST) on July 16, 2010.
Written comments must be submitted by August 20, 2010.
ADDRESSES: The public meeting will be held at the USPTO, in the South
Auditorium of Madison West, 600 Dulany Street, Alexandria, VA 22314.
Written comments should be sent by electronic mail message over the
Internet addressed to 3trackscomments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments-Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Robert A. Clarke. Although comments may be
submitted by mail, submission via e-mail to the above address is
preferable.
The written comments will be available for public inspection at the
Office of the Commissioner for Patents, located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available
via the USPTO Internet Web site (address: https://www.uspto.gov).
Because comments will be made available for public inspection,
information that is not desired to be made public, such as an address
or phone number, should not be included.
FOR REGISTRATION TO GIVE A PRESENTATION IN THE MEETING: If you wish to
make an oral presentation at the meeting, you must register by sending
an e-mail to the e-mail address, 3trackscomments@uspto.gov, by 5 p.m.
EST on July 13, 2010. See the registration information provided below.
FOR FURTHER INFORMATION CONTACT: Robert A. Clarke ((571) 272-7735),
Deputy Director, Office of Patent Legal Administration, directly by
phone, by e-mail to Robert.Clarke@uspto.gov, or by mail addressed to:
Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450. For further information on supplemental
searches, contact Mary Critharis, 571-272-8468, Senior Patent Counsel,
External Affairs, directly by phone, or by e-mail to
Mary.Critharis@uspto.gov.
SUPPLEMENTARY INFORMATION: This notice announces a public meeting to
solicit public opinions on an initiative being considered by the USPTO
to provide applicants with greater control over when their applications
are examined and to promote greater efficiency in the patent
examination process. For applications filed in the USPTO which are not
based on a prior foreign-filed application (e.g., that do not claim
foreign priority benefit under 35 U.S.C. 119(a)-(d)), an applicant
could: (1) Request prioritized examination; (2) for non-continuing
applications, request an applicant-controlled delay lasting up to 30
months prior to docketing for examination; or (3) obtain processing
under the current procedure 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
received, in the U.S. application: (1) A copy of the search report, if
any; (2) a copy of the first office action from the foreign office
where the application was originally filed; and (3) an appropriate
reply to the foreign office action. Where the foreign office 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 the foreign
office action. Following or concurrent with the submission of the
foreign office action and reply, applicant could request prioritized
examination or obtain processing under the current procedure. This
proposal would increase the efficiency of the examination of these
applications by avoiding or reducing duplication of efforts by the
office of first filing and the USPTO. Because efficiency gains are
anticipated in the roughly one half of all applications that are filed
first abroad, the result should be substantial improvement in the
USPTO's performance. By contrast, under the PTO's primary current
mechanism for worksharing, the patent prosecution highway program,
scaling up has been limited by the fact that it remains voluntary and
can only be utilized in situations where the USPTO has not already
begun its examination work. Perhaps for this reason, 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.
Since the requirement to provide a copy of the search report, first
action and an appropriate reply is being considered to avoid or reduce
duplication of effort, the USPTO seeks comment on whether this
requirement should be limited to first filings at offices that have
qualified as international searching authorities under PCT Article 16.
In addition, in order to avoid delays in disclosure, the USPTO seeks
comment on whether the requirement to provide a copy of the search
report, first action, and an
[[Page 31765]]
appropriate reply (which would result in examination delay at the
office of second filing) should be limited to applications that are
published.
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?
The idea of office-driven worksharing, or SHARE (``Strategic
Handling of Applications for Rapid Examination'') has already been the
subject of some public commentary.
On October 21, 2009, the USPTO published a Notice in the Federal
Register inviting the public to submit written comments and participate
in a roundtable discussion on work sharing. See Request for Comments
and Notice of Roundtable on Work Sharing for Patent Applications, 74 FR
54028 (October 21, 2009). Many of the comments regarding SHARE raised
the concern that delayed examination of the foreign origin applications
may work a disadvantage to USPTO first filers with respect to the
patent term adjustment (PTA) that may accrue. This concern could be
addressed by giving all applicants some control on when their
application is examined so that the applicant can best benefit from the
patenting process. Specifically, under the current proposal, those who
file first in a foreign office can choose subsequently to accelerate in
the USPTO. Some were also concerned that SHARE would only work well if
coordinated with other offices. The coordination has already started
with some offices. For example, the USPTO and the Korean Intellectual
Property Office (KIPO) are conducting a small-scale pilot to gather
empirical data and test the feasibility of the SHARE concept. More
recently, the USPTO and the United Kingdom Intellectual Property Office
(UKIPO) committed to develop a plan to optimize reuse of work on patent
applications that are jointly filed with the USPTO and UKIPO.
Others suggested that the search or examination fees be reduced or
delayed. The instant proposal permits deferral of certain fees if Track
III examination is requested. Because many comments focused on
examination delays in the office of first filing, comments 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.
The USPTO also intends to harmonize the existing examination
procedures for applications having been granted accelerated or
``special'' status including: (1) Applications under the accelerated
examination program; (2) applications under the various patent
prosecution highway programs; (3) applications advanced under other
programs under 37 CFR 1.102 (e.g., applicant's age or health); or (4)
national stage applications advanced out of turn because an
international preliminary examination report (IPER) prepared by the
United States International Preliminary Examining Authority or a
written opinion on the international application prepared by the United
States International Searching Authority states that the criteria of
novelty, inventive step (non-obviousness), and industrial
applicability, as defined in PCT Article 33(1)-(4), have been satisfied
for all of the claims presented in the application entering the
national stage. The USPTO is holding a public meeting and inviting
public comments to seek views on whether this initiative should go
forward and what changes should be considered. Further meetings may be
announced by the USPTO, as appropriate.
The USPTO recognizes that the traditional ``one-size fits all''
examination timing may not provide applicants much opportunity to
choose the examination timing they need. Therefore, in addition to the
current standard procedure (Track II), the USPTO is considering
providing applicants with greater ability to seek prioritized
examination (Track I) or, for non-continuing applications that do not
claim the benefit of a prior foreign-filed application, the ability to
seek an applicant controlled up to 30-month queue prior to docketing
for examination (Track III). By allowing applicants some control over
the timing of examination, it is anticipated that examination resources
would be better aligned with the needs of innovators.
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
[[Page 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.
Traditional Timing (Track II): Applications for which neither
prioritization nor an applicant-controlled up to 30-month queue prior
to docketing for examination is requested will be processed
traditionally, except that applicants may request prioritized
examination at any time (e.g., on filing of a notice of appeal) and,
for any non-continuing application, applicants may request an
applicant-controlled up to 30-month queue prior to being placed on the
docket for examination on the merits. An application that claims the
benefit of a prior-filed foreign application will not be docketed for
examination in Track II until: (1) A copy of the search report, if any,
(2) a copy of the first action on the merits by the intellectual
property office in which the priority application was filed, and (3) a
reply to that action in the application filed at the USPTO has been
received.
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.
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.
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
[[Page 31767]]
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.
The USPTO is also considering negotiating with one or more
intellectual property granting offices (IPGOs) to provide an optional
service for applicants at the USPTO to request that the USPTO obtain
from one or more IPGOs a supplemental search report. This supplemental
search report will be considered in preparation of the first Office
action on the merits by the examiner. An additional search will be
conducted by the examiner at the USPTO. This option would be subject to
the USPTO negotiating appropriate agreements with one or more IPGOs.
The USPTO is also considering providing a short period for applicant to
review and make any appropriate amendments or remarks after the
supplemental search is transmitted prior to preparing the first action.
Comments on one or more of the following questions would be
helpful:
1. Should the USPTO proceed with any efforts to enhance applicant
control of the timing of examination?
2. Are the three tracks above the most important tracks for
innovators?
3. Taking into account possible efficiency concerns associated with
providing too many examination tracks, should more than three tracks be
provided?
4. 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.
5. 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.
6. Should prioritized examination be available at any time during
examination or appeal to the Board of Patent Appeals and Interferences
(BPAI)?
7. Should the number of claims permitted in a prioritized
application be limited? What should the limit be?
8. Should other requirements for use of the prioritized track be
considered, such as limiting the use of extensions of time?
9. Should prioritized applications be published as patent
application publications shortly after the request for prioritization
is granted? How often would this option be chosen?
10. 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?
11. Should eighteen-month patent application publication be
required for any application in which the 30-month queue is requested?
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?
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?
14. 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?
15. 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?
16. 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?
17. 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?
18. 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?
19. 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?
20. 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?
21. Should the USPTO offer supplemental searches by IPGOs as an
optional service?
22. 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?
23. Would supplemental searches be more likely to be requested in
certain technologies? If so, which ones and how often?
24. Which IPGO should be expected to be in high demand for
providing the service, and by how much? Does this depend on technology?
25. Is there a range of fees that would be appropriate to charge
for supplemental searches?
26. 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?
27. Should the search be required to be conducted based on the U.S.
prior art standards?
28. Should the scope of the search be recorded and transmitted?
29. What language should the search report be transmitted in?
30. Should the search report be required in a short period after
filing, e.g., within six months of filing?
31. How best should access to the application be provided to the
IPGO?
[[Page 31768]]
32. How should any inequitable conduct issues be minimized in
providing this service?
33. 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?
Registration Information: The USPTO plans to make the meeting
available via Web cast. Web cast information will be available on the
USPTO's Internet Web site before the meeting. The written comments and
list of the meeting participants and their associations will be posted
on the USPTO's Internet Web site (https://www.uspto.gov).
When registering, please provide the following information: (1)
Your name, title, and, if applicable, company or organization, address,
phone number, and e-mail address; and (2) if you wish to make a
presentation, the specific topic or issue to be addressed and the
approximate desired length of your presentation.
There is no fee to register for the public meeting and registration
will be on a first-come, first-serve basis. Early registration is
recommended because seating is limited. Registration on the day of the
public meeting will be permitted on a space-available basis beginning
at 1:30 p.m. Eastern Standard Time, on July 20, 2010.
The USPTO will attempt to accommodate all persons who wish to make
a presentation at the meeting. After reviewing the list of speakers,
the USPTO will contact each speaker prior to the meeting with the
amount of time available and the approximate time that the speaker's
presentation is scheduled to begin. Speakers must then send the final
electronic copies of their presentations in Microsoft PowerPoint or
Microsoft Word to 3trackscomments@uspto.gov by July 16, 2010, so that
the presentation can be displayed in the Auditorium.
If you need special accommodations due to a disability, please
inform the contact person (see FOR FURTHER INFORMATION CONTACT) by July
16, 2010.
Dated: May 25, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-13244 Filed 6-1-10; 8:45 am]
BILLING CODE 3510-16-P
