Source: Grill IP patents news
The patenting process in the United States may not be broken, but it’s definitely in serious need of improvement. The officials at the United States Patent and Trademark Office (USPTO) are probably the first to admit that, and they are now reaching out to the IP community to get some advice. The Office recently issued a Federal Register notice, requesting written comments on two major issues:
- How can the USPTO better leverage other applications containing similar disclosures to US applications undergoing examination, in order for relevant information to reach examiners earlier?
- What information should comprise a patent’s face, considering that examination and processing now takes place in an electronic setting?
The notice mentions a forthcoming USPTO roundtable – scheduled for September 28 – at the organization’s headquarters in Alexandria, Virginia.
With regards to the first point, the USPTO has been investigating for a while how to use available electronic resources effectively, so that examiners have all the material (e.g. prior art, search reports) from previous applications at hand, which would improve the quality of patent reviews. Previous applications would involve any domestic parents or foreign counterparts that help to assess US applications. One such work-sharing program is the Global Dossier, an initiative of the IP5, a grouping that brings together the USPTO, the Korean Intellectual Property Office (KIPO), the European Patent Office (EPO), the Japan Patent Office (JPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). The Dossier offers public access to official file contents of counterpart foreign applications.
The USPTO highlights that “too many applications… might present large amounts of information that has no relevance to the application being examined,” and argues that achieving the “right balance of the scope of applications and information therein is critical to ensure examiners are provided with the most relevant information without overburdening them with immaterial and marginally relevant information.” The Office acknowledges that applicants will have many different preferences as to how their applications should be defined – regardless of whether that’s based on the USPTO’s definitions or those of the applicants.
As far as the second question is concerned, the USPTO will try to remove unnecessary information from a patent’s front page, although the notice indicates that any eliminated information will remain publicly available through the Patent Application Information Retrieval (PAIR) system.
The roundtable on September 28 will tackle five questions in total, and the USPTO has asked for public comment on all of them:
- In balancing the goals of examination quality and efficiency, should the USPTO monitor other applications, besides domestic patent and counterpart foreign applications, for relevant information located therein for consideration in the instant U.S. application? If so, which other applications should be monitored (e.g., siblings, applications involving the same or related technology, etc.)?
- What is the most convenient way to bring an application to the USPTO’s attention that should be monitored for information during the examination of a U.S. application (e.g., automated system, applicant notifies the USPTO, etc.)?
- How should the USPTO determine which information from the monitored applications to provide examiners while ensuring they are not overburdened with immaterial and marginally relevant information?
- If the USPTO were to import information from applicant’s other applications, how should the USPTO document the information imported into the image file wrapper of the instant U.S. application? For example, should the record reflect which domestic parent or counterpart foreign application the information was imported from, the date that the information was imported, and whether the examiner considered the imported information?
- Taking into consideration the information that is publicly available in PAIR, what information should be part of a patent? For example, should prior art references and classification information still be listed on the front page of a patent?
All Commentary concerning these questions should be submitted by September 28. Submission can be made electronically, by emailing PriorArtAccess@uspto.gov. If you suspect your opinion will aid this Office in streamlining the complicated and lengthy patent process, have it heard.Tags: enhancing patent process, European Patent Office (EPO), Global Dossier, Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), patent law, State Intellectual Property Office of the People’s Republic of China (SIPO), United States Patent and Trademark Office, UPSTO notice, UPSTO roundtable, US IP law