USPTO Examination Related Initiatives

1
USPTO Examination Related Initiatives

• Bob Spar
• Director, Office of Patent Legal Administration
• Deputy Commissioner for Patent Examination Policy
• Maryland Patent Law Association
• September 14, 2006
• Bob.Spar_at_uspto.gov
• [phone]

2
USPTO Examination Related Initiatives

• Quality Approached from different angles
• Proposed Rule Makings
• Examination Initiatives
• Technology Innovation

3
Proposed Rule Makings

• Claims
• Continuations, RCEs, and Applications Containing
  Patentably Indistinct Claims (Continued
  Examination)
• Accelerated Examination (AE), Petitions to Make
  Special (Practice Change Only)
• Information Disclosure Statements (IDSs)
• Other Possible Rule Makings
• Markush Practice/Alternatives in Claims
• Preexamination Search Reports
• Changes To Support EFS-Web filings
• Amendments in Reexaminations and Reissues
• Deferred Examination

4
Proposed Rule Makings

• Quality Objectives
• Examination Focused initial patentability
  examination of a limited number of representative
  claims Get it right the first time
• Operational efficiency Create finality in the
  examination process
• Improved quality of issued patents Give more
  timely notice of, and greater public certainty
  on, the scope of patent protection by reducing
  the number of patents that have overlapping
  disclosures and claims

5
Notice of Proposed Rule Making Claims

• Changes to Practice for the Examination of
  Claims in Patent Applications
• 71 FR 61 (Jan. 3, 2006) 1302 OG 1329 (Jan. 24,
  2006)
• See further information on USPTO website at
  http//www.uspto.gov/web/offices/pac/dapp/opla/pre
  sentation/focuspp.html
• Very large number of comments received during
  the extended comment period which ended May 3,
  2006
• All comments posted on USPTO website
  http//www.uspto.gov/web/offices/pac/dapp/opla/com
  ments/fpp_claims/claims_comments.html

6
Claims NPR Rules Proposed to be Changed or Added
in 37 CFR

• 1.75(b) and (c) Claim(s)
• 1.104(a)(1), (b), and (c)(1) Nature of
  examination
• 1.105(a)(1)(ix)
  Requirements for information
• 1.117 (new) Refund due to cancellation of
  claim
• 1.261 (new) Examination support
  document
• 1.704 (c)(11) and (c)(12) Reduction of
  period of adjustment of patent term

7

• Notice of Proposed Rule Making
• Continued Examination

• Changes to Practice for Continuing Applications,
  Requests for Continued Examination Practice, and
  Applications Containing Patentably Indistinct
  Claims
• 71 FR 48 (Jan. 3, 2006) 1302 OG 1318 (Jan. 24,
  2006)
• See USPTO website for further info
• Very large number of comments received during
  the extended comment period which ended May 3,
  2006
• All comments posted on USPTO website
  http//www.uspto.gov/web/offices/pac/dapp/opla/com
  ments/fpp_continuation/continuation_comments.html

8
Continued Examination NPR List of Rules Proposed
to be Changed

• 37 CFR 1.78 Claiming benefit of earlier filing
  date and cross-references to other applications
• 37 CFR 1.114 Request for continued examination
• 37 CFR 1.495 Entering the National Stage in
  the United States of America

9
Continued Examination NPR Proposed
Reorganization of entire rule 1.78 with new
subsections

• Section 1.78 is proposed to be reorganized as
  follows
• 1.78(a) definitions established
• 1.78(b) - claims under 35 USC 119(e) for the
  benefit of a prior-filed provisional application
• 1.78(c) - delayed claims under 35 USC 119(e)
• 1.78(d) - claims under 35 USC 120, 121, or
  365(c) for the benefit of a prior-filed
  nonprovisional application
• 1.78(e) - delayed claims under 35 USC 120, 121,
  or 365(c)
• 1.78(f) - applications naming at least one
  inventor in common
• 1.78(g) - applications or patents under
  reexamination naming different inventors and
  containing patentably indistinct claims and
• 1.78(h) - the treatment of parties to a joint
  research agreement under the CREATE Act.

10
Public Comments on Claims and Continued
Examination NPRs

• The Office received about 520 comments on both
  the claims and continuations NPRs, with over 330
  comments on the Continued Examination Practice
  NPR and over 180 comments on the Claims NPR from
  
• Intellectual Property Organizations
• Businesses Government Agencies Universities/
  Other Organizations
• Law Firms
• Patent Practitioners, Independent Inventors, and
  Miscellaneous Individuals.

11
Next Steps on Claims and Continued Examination
NPRs

• The Office is still considering all the public
  comments.
• All the public comments have been put in
  notebooks, with grouping of similar comments, and
  carefully reviewed and
• suggestions have been analyzed vis à vis goals
  and objectives
• Decisions will be made by taking into account all
  factors.
• The final rule making notice will include replies
  to the comments.
• The Office plans to combine both the Claims and
  Continued Examination NPRs into one final rule
  notice.
• Publication and Effective date of final rules ?

12
Notice of Proposed Practice Change

• Changes to Practice for Petitions in Patent
  Applications to Make Special and for Accelerated
  Examination
• 71 FR 36323 (June 26, 2006) 1308 OG 106 (July
  18, 2006)
• Available at http//www.uspto.gov/web/offices/pac/
  dapp/ogsheet.html
• Effective August 25, 2006

13
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Overview

• Effective August 25, 2006, the following have
  been revised
• Requirements for filing petitions for
  accelerated examination, and other petitions to
  make special, and
• Procedures set forth in MPEP 708.02 (8th
  Edition) for processing and examining these
  special cases.
• GOAL to achieve a final decision by the
  examiner within 12 months from the filing date of
  the application
• See Changes to Practice for Petitions in Patent
  Applications to Make Special and for Accelerated
  Examination, 71 Fed. Reg. 36323 (June 26, 2006)
  (notice) available at http//www.uspto.gov/web/off
  ices/pac/dapp/ogsheet.html
• MPEP 708.02 (8th Edition) will be revised in due
  course to reflect the changes.

14
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Overview

• The new requirements apply to all petitions to
  make special. Thus, a uniform practice will be
  established.
• Except Petitions on the basis of health, age
  and the Patent Prosecution Highway (PHH) pilot
  program
• If the petition meets the requirements set forth
  in the notice,
• The application will be granted special status
  under the revised AE program, and
• The new processing and examination procedures
  will apply to the application.

15
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Effective
Date Provision 8/25/06

• Any petition for accelerated examination, and
  any other petition to make special (except
  petitions based on applicants health or age or
  the PPH pilot program) must meet the requirements
  set forth in the notice.
• For example, the petition and application must
  be filed electronically via EFS or EFS-Web.
• Petitions to make special filed before 8/25/06
  only had to comply with the previous requirements
  set forth in MPEP 708.02 (8th Edition).
• The application will be processed and examined
  using the previous procedures set forth in MPEP
  708.02 (8th Edition).
• Petitions for the revised AE program were not
  accepted before 8/25/06.

16
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Summary

• The revised AE program will allow applicants who
  desire quick patent protection for their
  inventions a way
• To receive a final patentability decision by the
  examiner within 12 months and
• To choose which applications they want to
  advance for examination.
• In order to meet the 12-month goal, an applicant
  will be required to provide additional
  information with the petition for AE, and comply
  with revised procedures throughout the
  examination process, to assist the examiner in
  expeditiously arriving at a final disposition.

17
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Summary -
Benefits for Applicants

• Expedited handling throughout the patent
  application process, including
• Office of Initial Patent Examination (OIPE)
• Examination
• Post-appeal process and
• Patent issue process.
• Earlier and better interactions with the
  examiner.
• More participation in clarifying and focusing
  the issues during the prosecution.

18

• Revised Accelerated Examination (AE) Program
• and Petition to Make Special Procedures
• Filing Requirements

• The application must be filed with
• The petition to make special form PTO/SB/28 and
• The fee under 1.17(h), or a statement that the
  claimed subject matter is directed to
  environmental quality, energy, or countering
  terrorism (no fee required, see 1.102(c)(2)).
• The application must be complete under 1.51
  and in condition for examination upon filing.
• For example, the application must include the
  filing fees and an executed oath or declaration
  under 1.63.

.
19
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Filing
Requirements (Contd)

• The application, petition, and required fees must
  be filed electronically via EFS or EFS-Web.
• The application must contain
• 3 or fewer independent claims and
• 20 or fewer total claims.
• The claims must be directed to a single
  invention.
• The application must not contain any multiple
  dependent claims.

.
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• Revised Accelerated Examination (AE) Program
• and Petition to Make Special Procedures
• Filing Requirements (Contd)

• The petition (form PTO/SB/28) must include
• A statement that applicant will agree to make an
  election without traverse in a telephonic
  interview
• A statement that applicant will agree to have an
  interview when requested by the examiner
• A statement that applicant will agree not to
  separately argue the patentability of any
  dependent claim during any appeal
• A statement that a pre-examination search was
  conducted and
• An accelerated examination support document
  (ESD).
• Applicant should contact the Office if a
  decision is not received by applicant after three
  months from the filing of the petition.

.
21

• Revised Accelerated Examination (AE) Program
• and Petition to Make Special Procedures
• Filing Requirements Pre-examination Search

• The statement that a pre-examination search was
  conducted must include
• An identification of the field of search by U.S.
  class and subclass and the date of the search,
  where applicable and
• For database searches,
• the search logic or chemical structure or
  sequence used as a query
• the name of the file or files searched
• the database service and
• the date of the search.

.
22

• Revised Accelerated Examination (AE) Program
• and Petition to Make Special Procedures
• Filing Requirements AE Support Document

• The accelerated examination support document must
  include
• An information disclosure statement (IDS) citing
  each reference deemed most closely related to the
  subject matter of each claim
• An identification of where each limitation
  disclosed in the references is found.
• A detailed explanation of how each claim is
  patentable over the reference
• A concise statement of utility of the invention
• A showing of support for each claim limitation
  in specification and any parent application,
  including any means-plus-function limitations
  and
• An identification of any cited references that
  may be disqualified as prior art under 35 U.S.C.
  103(c).

.
23
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Processing
and Examining Procedures

• Once the application is granted special status,
  the application will be promptly taken up for
  action (e.g., within 2 weeks of petition
  decision), with special examining procedures set
  forth in the notice.
• The examiner will consider the AE Support
  Document and conduct a complete prior art search.
• Prior to mailing any first Office action
  rejecting claims,
• A telephone interview will be conducted, unless
  an interview is deemed unlikely to overcome the
  rejection and
• A conference will be conducted in the USPTO to
  ensure the viability of the rejection(s).
• There will also be a conference before mailing
  any final Office action.

.
24
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Processing
and Examining Procedures (Contd)

• Office actions will have a shorter period for
  reply
• One-month (or 30 days) SSP for any action, other
  than a final rejection or allowance.
• No extensions of time under 1.136(a)
  permitted.
• Failure to timely file a reply will result in
  abandonment of the application.
• Extensions of time are only available under
  1.136(b).

.
25
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Examining
Procedures Applicants Reply

• Any reply must be
• filed via EFS-Web
• complete, fully responsive and
• limited to the rejection(s), objection(s) and
  requirements made.
• An updated AE support document is required for
  any amended or newly added claims that are not
  encompassed by the previously-filed AE support
  document.
• The above requirements are imposed in order to
  be able to complete the examination within 12
  months.

.
26
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Examining
Procedures Applicants Reply (Contd)

• The Office will treat any amendments (including
  after-final amendments and RCE submissions) as
  not being fully responsive if the amendment
• Exceeds the 3/20 claim limit
• Presents claims to a non-elected invention
• Presents claims not encompassed by the
  pre-examination search or
• Presents claims requiring an updated AE support
  document, which is not submitted.

.
27
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Post-Allowance
Procedures
.

• While the mailing of a notice of allowance is
  the final disposition for purposes of the
  Offices 12 month goal, in order for the
  application to be expeditiously issued as a
  patent, applicant must
• Within one month, pay the issue fee (and any
  outstanding fees due) and return the form
  PTOL-85B (Part B of the Notice of Allowance and
  Fee(s) Due) and
• Not file any post-allowance papers that are not
  required by the Office.

28
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Appeal
Procedures

• While the mailing of a final rejection is the
  final disposition for purposes of the Offices 12
  month goal, in order for the application to be
  expeditiously forwarded to the Board of Patent
  Appeals and Interference for a decision,
  applicant must
• Promptly file the notice of appeal, appeal brief,
  and appeal fees and
• Not request a pre-appeal brief conference (which
  would not be of value because a conference would
  already have been conducted).

.
29
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures The Offices
Twelve-Month Goal

• The objective is to achieve a final decision by
  the examiner within 12 months from the filing
  date of the application.
• The 12-month goal is successfully achieved when
  one of the following final dispositions occur
• Notice of Allowance
• Final Office action
• Notice of Appeal
• Request for Continued Examination (RCE) and
• Abandonment.

30
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures The Offices
Twelve-Month Goal (Contd)

• The final disposition may occur later than 12
  months in certain situations.
• For example, if there is a secrecy order,
  national security review, interference, petition
  under 1.181, 1.182, or 1.183, or non-compliant
  or not fully responsive amendment.
• Any failure to meet the goal, or other issues
  relating to this goal, are neither petitionable,
  nor appealable.

31
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Eligible
Applications

• Any non-reissue utility or design application
  filed under 35 U.S.C. 111(a) is eligible.
• Not eligible plant applications, international
  applications including applications entering the
  national stage under 35 U.S.C. 371, and reissue
  applications.

32
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Summary

• Quality Patents in Less Time
• In exchange for quick examination, examiners will
  receive more focused and detailed information
  about the invention and the closest prior art
  from applicants.
• The upfront disclosure by applicants will help
  examiners to more quickly make the correct
  decision on whether a claimed invention is
  patentable.

33
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures More
Information

• Additional information is posted on the USPTOs
  Internet Web site at http//www.uspto.gov/web/pa
  tents/accelerated
• For more information, please contact the Office
  of Patent Legal Administration at [phone]
  or e-mail to PatentPractice_at_USPTO.gov.

34
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Filings to
date

• Less than 20 filed in the first 2 weeks of the
  program.
• Applications classified in Electrical,
  Mechanical, Games and Business Methods.
• Some applicants appear to be filing groups of
  these petitions.

35
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Pointers

• An application filed before August 25, 2006 can
  enter this program through the filing of a
  continuation.
• Do not file a preliminary amendment. Incorporate
  the new text into the application as filed.
• The explanation of patentability must discuss
  obviousness as well as anticipation.

36
Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Sequence
Listings

• Until the next deployment of EFS-Web (tentatively
  scheduled for October 2006), EFS-Web will not
  have the facility for handling large text files
  such as sequence listings.
• In the interim, applications which contain a
  sequence listing (or other large text files) for
  which accelerated examination is requested may be
  filed in any of the following options

37
Revised Accelerated Examination (AE) Program and
Petition to Make Special ProceduresInterim
Filing Options for Sequence Listings

• Until the next deployment of EFS-Web (expected in
  October 2006),
• The entire application, except the sequence
  listing, is filed through EFS-Web, and the
  sequence listing is filed electronically on the
  same calendar day through ePAVE as a follow-on
  paper.
• The entire application, except the sequence
  listing, is filed through EFS-Web, and the paper
  copy and computer readable form of the sequence
  listing is filed on the same calendar day by hand
  delivery or Express Mail (directed to Mail Stop
  Sequence).
• The entire application, except the petition for
  AE, is filed through ePAVE, and the petition
  (including all attachments) is filed on the same
  calendar day through EFS-Web.

38
Notice of Proposed Rule Changes IDS NPR

• Changes to Information Disclosure Statement
  Requirements and Other Related Matters
• 71 FR 38808 (10 July 2006) 1309 OG 25 (Aug. 1,
  2006)
• Comment period ended September 8, 2006

39
Objectives of Proposed Changes in IDS NPR

• Three quality of examination objectives
• 1. Get IDS(s) to examiner before initial
  examination
• 2. Reduce number of IDS cites in applications
  which should result in only the most pertinent
  being cited
• 3. Provide meaningful information to the examiner
  about any large documents, foreign language
  documents, or when a large number of documents
  are submitted
• 4th Objective Help applicants avoid having to
  submit an IDS for documents served on them by 3rd
  parties

40
Results to be Achieved by Proposed Changes in IDS
NPR

• Quality results achieved if objectives are met
• 1. Less wasted time by examiner on unrelated,
  cumulative or not understood cites in IDSs
• 2. Most relevant prior art known by applicant
  will be appropriately considered by examiner in
  preparing 1st Office action, so search and
  examination process can be better focused
• 3. IDSs will be meaningful, add early value to
  the examination process, help examiner to issue a
  high quality 1st Office action, and avoid wasting
  time

41
Proposed Changes In IDS NPRTime Periods 1- 4
Application Prosecution Timeline and
corresponding IDS requirements
Application Filed
First Office Action on the Merits (FAOM)
Allowance of Application
Payment of Issue Fee
Time Sufficient for Consideration
Patent

• Third Period
• Timeliness cert., and
• Patentability Justification which includes
  Explanation,
• Non-cumulative description, and either
• (A) Patentability reasons
• for unamended claims or
• (B)(1) Statement of unpatentable claims,
• (B)(2) Amendment, and
• (B)(3) Patentability reasons for amended claim(s)

• Fourth Period
• Timeliness cert.
• Patentability Justification which includes
• Explanation,
• Non-cumulative description,
• Statement of unpatentable claims,
• Amendment, and
• Patentability reasons for amended claim(s)
  and
• Petition to w/d from allowance

• First Period
• Up to 20 citations permitted
• w/o any explanation reqd.
• Explanations reqd for
• each ref. gt25 pages, or in
• non-English language, or for
• all refs when more than 20

• Second Period
• Explanation, and
• Non-cumulative
• description

42
Proposed Changes in IDS NPR

• What is the explanation if it is required?
• A. An identification of
• (1) the specific feature(s), showing(s), or
  teaching(s) that caused the document to be cited,
  with
• (2) a portion of the document where the
  specific, e.g., feature, may be found, and
• B. A correlation of, e.g., the feature, to
  corresponding specific claim language, or to a
  specific portion(s) of the supporting
  specification, where the document is cited for
  that purpose.

43
Proposed Changes In IDS NPRAddressing Some Very
Large IDS Submissions

• Problem Applicants sometimes receive very large
  numbers of references from a third party, e.g.,
  from litigation in a patent related to the
  application under examination, and they feel they
  must submit them whether or not they believe they
  are relevant. Such large submissions impose
  significant burdens on applicants, and the
  Office, provide little if any useful information
  to the examiner, while wasting his/her limited
  amount of examining time.
• Proposal Indicate in protest rule, 1.291, that
  applicants need not submit such information, as
  they can, instead, provide a consent to a protest
  by such third party, and thereby shift the burden
  back to the 3rd party to submit the information
  directly to the Office by complying with the
  protest rule requirements.

44
Proposed Changes In IDS NPRReexamination
Proceedings

• Proposed IDS rules would be applicable to
  reexamination proceedings.
• Compliant IDSs are needed to meet statutory
  requirement of "special dispatch" in
  reexamination
• Patent owner submissions of prior art in both ex
  parte and inter partes reexamination proceedings
  would have to comply with
• 1.97 and 1.98.
• Third party submissions of prior art in inter
  partes reexamination proceedings would have to
  comply with 1.98.
• IDS rules would not apply to requests for
  reexamination as
• 1.510 and 1.915 requirements are, at least,
  as comprehensive.

45
Proposed Changes In IDS NPRThird Party
Submissions after Pre-Grant Publication

• The window of time for any 3rd party to file a
  submission under 1.99 would be extended to 6
  months after pre-grant publication of an
  application, or until the notice of allowance,
  whichever occurs first.
• It would be clarified that only a 3rd party (not
  an applicant) could file a submission under
  1.99.

46
Proposed Changes In IDS NPREntry of Certain
Amendments After Allowance

• To decrease the need to file a RCE or a
  continuation, amendments affecting the following
  items would be entered after allowance and before
  (or with) issue fee payment
• Bibliographic data
• Reference to a joint research agreement
• Change in the order of inventors and
• Correction of inventorship
• These formality amendments would be entered after
  payment of the issue fee, if submitted in
  sufficient time to permit the patent to be
  printed with the amended information.

47
Proposed Changes In IDS NPR Addressing
Practitioners Concerns Regarding Additional
Disclosure Requirements

• Objective Address the bars concern that the
  additional disclosure requirements, when
  triggered, may expose practitioners to
  inequitable conduct charges.
• Proposal Add a safe harbor to 1.56 that
  applies to a party, when attempting to comply
  with the additional disclosure requirements of
  1.98, who has made reasonable inquiry of the
  relationship of the documents to the claims, has
  acted in good faith, and has a reasonable basis
  for the statements provided.

48
Duty to Review (10.18)IDS NPR

• An IDS, like any other paper filed in the Office,
  is subject to the provisions of 10.18.
• Section 10.18(b)(2) requires an inquiry
  reasonable under the circumstances.
• Thus, each item of information being contemplated
  for inclusion in an IDS must be reviewed before
  submission of the IDS to the Office to assure
  that the submission will not
• (1) Cause unnecessary delay or needlessly
  increase the cost of examination, or
• (2) Result in the obscuring of material
  information.
• Failure to review an IDS can also implicate
  obligations of registered practitioners under
  10.23(b) and (c), and  10.77(b) (handle a legal
  matter w/o preparation adequate in the
  circumstances).

49
More Information on IDS NPR

• The below listed documents may be accessed via
  the More Information hyperlink associated with
  the Notices title at the following USPTO
  webpage http//www.uspto.gov/web/offices/pac/dapp
  /ogsheet.html
• Executive Summary IDS NPR,
• Detailed Summary IDS NPR,
• Charts of The Four Time Periods for Submitting
  an IDS and Their Corresponding Requirements, and
• Application Prosecution Timeline.
• For more information, please contact the Office
  of Patent Legal Administration at [phone]
  or e-mail to PatentPractice_at_uspto.gov, or contact
  one of the following
• Hiram Bernstein 571-272-7707
• Brian Hanlon 571-272-5407
• Robert J. Spar 571-272-7700

50
Public Commentson IDS NPR

• Approximately 55 comments have been received
• These comments will all be posted on our website.
• All comments will be carefully reviewed and
  evaluated, along with all suggestions made.

51
Examination Initiatives

• Patent Training Academy
• Central Reexamination Unit
• Pre-Appeals Conferences
• Hiring
• Retention
• Teleworking
• Outsourcing Initiatives

52
Examination Initiatives

• Patent Training Academy
• Collegiate environment
• 8-month intensive training
• 6 classes by end of FY 06
• All new hires will participate in PTA in FY 07

53
Examination Initiatives

• Central Reexamination Unit
• Consolidation of all reexamination examining and
  processing functions
• Reduce pendency for all reexamination filed after
  March 1, 2006 to about 20 months
• All filing requirements must be met to get a
  filing date

54
Examination Initiatives

• Pre-Appeal Brief Conferences
• Selected by Appellant for cases where believe
  clear error exists
• Applicants required to identify errors
• Structured procedure
• In-depth review of final rejection by panel
• Must be requested when filing Notice of Appeal

55
Examination Initiatives

• Pre-Appeal Brief Conferences
• Time to decide requests 42 days on average
• How many request are received?
• About 600/month
• About 21 of cases with Notice of Appeal
• How many cases receive relief about 45

56
Examination Initiatives

• Hiring
• 1,200 examiners hired in FY 06
• 1,000 hires per year every year until 2012
• Recruitment Bonuses
• Pre-employment Screening

57
Examination Initiatives

• Retention
• Special Pay Request to OPM
• Retention Bonuses
• Training/Education Opportunities
• Worklife Initiatives

58
Examination Initiatives

• Teleworking
• Patents Hoteling Program
• Patents Telework Program for Examiners
• Work_at_Home for Managers
• TSS Patents Telework Pilot

59
Examination Initiatives

• Outsourcing Initiatives
• PGPub Classification
• Reclassification
• PCT Outsourcing
• Foreign offices and contractor(s)
• Work Sharing Initiatives
• Patent Prosecution Highway For info, see
  http//www.uspto.gov/web/patents/pph/pph_index.htm
  l

60
Examination Initiatives Patent Prosecution
Highway

• Objectives To leverage the fast track
  examination procedures available in JPO and USPTO
  to allow applicants in both countries to obtain
  corresponding patents faster and more efficiently
• Pilot started July 3, 2006 and will run for one
  year in USPTO and JPO
• Example of Procedure Applicant files in JPO,
  then w/i 1 year files in USPTO with priority
  claim. If at least one claim is allowed by JPO,
  applicant may request in USPTO to participate in
  PPH pilot program with accelerated examination
  provided
• 1) US case not yet examined 2) all US claims
  (amended to) correspond to allowed JP claims 3)
  copies of allowed JP claims, and 4) all JP office
  actions, with English translations, supplied 5)
  IDS filed with all JP cites and copies of cites
  6) petition with fee filed
• If petition granted, US application advanced out
  of turn for examination
• PCT applications are not eligible
• Three (3) requests have been received so far

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Information Technology

• EFS-Web Web-based patent application filing
  system
• Documents soft-scanned into IFW
• Documents immediately available to examiners and
  applicants via PAIR
• It is easy to use for filing new applications and
  follow-on correspondence
• Usage is rapidly increasing

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Quality InitiativesFuture

• Examination
• Establish Regional USPTO Offices
• Create Partnerships with Universities
• Establish Flat Goal, Piecework and Awards above
  100
• Stand-Alone Quality Award for Examiners
• Quality Metrics and Performance Targets with
  External Stakeholders
• Patent Application Peer Review Pilot
• Transition into International Patent
  Classification

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Quality InitiativesFuture

• Information Technology
• Implement Patent File Wrapper
• Create a Centralized Online Docketing System
• Develop Auto Office Action Generator
• Initiate a search Exploration Project
• Increase E-Filings Initiative

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• Thank you!