IP Update, Special Edition (10 June 2010)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

USPTO Asks for Public Comments on a Proposed Three-Track Examination Process

On June 4, 2010 the USPTO announced a series of proposed changes to the current examination process that would provide applicants greater control over the timing of examination of their applications and enhance worksharing between intellectual property offices. The USPTO will hold a public meeting to address the proposals on July 20 and written public comments must be submitted by August 20, 2010.

Under the proposal an applicant would be able to elect Track I (prioritized examination); Track II (the current examination process), or Track III (delayed examination). Additionally, for any U.S. application that is first filed in a foreign IP office and claims benefit to that application under 35 U.S.C. 119 (a)-(d), the USPTO would take no action until it receives a copy of the search report, if any; the first office action from the foreign office; and an appropriate reply to the foreign office action.

Track I, prioritized examination, would require the payment of a fee (yet to be determined) but would not require a prior art search or submission of search results via an ESD as in the current accelerated examination process. The USPTO would set a goal of issuing a first office action within four months and concluding examination within twelve months for Track I applications. Applications first filed in a foreign office would not be eligible for Track I examination until the USPTO receives the foreign search report, office action and applicant reply. The USPTO is considering limiting the number of claims in a Track I application to four independent and thirty total claims.

Track II would be similar to the current examination process with the exception that applications claming the benefit of a previously filed foreign application under 35 U.S.C. 119 (a)-(d) would not be docketed for action until the USPTO receives the search report, if any, the first office action from the foreign office, and an appropriate reply to that office action. The USPTO is requesting public comment on how Patent Term Adjustment (PTA) should be calculated for applications in which examination is delayed awaiting action by the foreign office.

Track III, delayed examination, would allow applicants to delay examination for up to 30 months on non-continuing applications. Applicants requesting Track III examination may not request non-publication of the application. Once examination is requested within the 30-month period the application will be placed in the examination queue as if the request date is the actual filing date. Failure to request examination within the 30-month period would result in abandonment of the application. The USPTO is requesting public comment on how PTA calculations should be handled for Track III, delayed examinations.

The USPTO has requested public input on the proposed changes via answers to a series of 33 questions stated in the Federal Register notice. If the USPTO decides to move forward with any of the proposals, a Notice of Public Rulemaking will be published in the future with proposed rules. The public will have the opportunity for a second round of comments before any proposed rules can be implemented.

For more information, please see the Federal register Notice of June 4, 2010.

Summary provided by Nicholas P. Godici

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