Category Archives: Initiatives

Reflections on USPTO Design Day 2017: What’s Next?

Reflections on USPTO Design Day 2017: What’s Next?

Author: Elizabeth D. Ferrill
Editor: Eric P. Raciti

Each April, the design patent community gathers at the USPTO to discuss design prosecution and protection. This year, on April 25, another sell-out crowd of over 300 people attended the 11th Annual USPTO Design Day, which is sponsored by the USPTO, IPO, AIPLA, the IP section of the ABA, and the IDSA. This year’s event including important updates on changes in Technology Center 2900 (which is responsible for all design examination), international protection of designs, including a special guest from the Canadian IP office, as well as evolving trends in fashion, the usefulness of motions to dismiss in design patent cases, and the potential effect of prosecution history in litigation and claim construction.
Continue reading

Tagged , ,

Examination Time and Production System: Your Opinion is Requested

Author: Adriana L. Burgy
Editor: Aaron J. Capron

At the end of October of 2016, the USPTO solicited public feedback as the Office embarked on reevaluating its examination time goals.  The Federal Register announcement can be found here.  At the Office, each technology area is assigned an examination time goal; examination time goals vary by technology and are considered the average amount of time that should be spent by an examiner when examining a patent application in a particular technology area.  With technology, examination and art changes over the years, the Office now seeks to reevaluate those examination time goals. Continue reading

Tagged ,

The 21st Century USPTO: Using Electronic Resources to Increase Examination Quality and Reduce Time From Allowance to Issuance

Author: Stephanie M. Sanders
Editor: Amanda K. Murphy, Ph.D.

In its August 29th Federal Register Notice, the USPTO announced that it will be hosting a roundtable event on September 28, 2016 at its headquarters in Alexandria, VA, to obtain public comment on the following topics related to utilizing electronic resources to streamline the patent examination and issuance processes.

  1. How can the USPTO best utilize available electronic resources (e.g., PAIR, Global Dossier), to provide examiners with information (e.g., references, search results) from an applicant’s other applications as early as possible to increase patent examination quality and efficiency?
  2. How can the USPTO reduce the time between allowance and issuance by no longer printing potentially unnecessary information on the front page of a patent?

Regarding the first point, the USPTO is specifically seeking public input on the question of whether, for a given application being examined, the Office should monitor other applications submitted by the applicant for relevant information contained therein. Relevant information may include references cited by the applicant, references identified by an examiner, search reports, and the like. The Office is considering monitoring not just applications and patents in the same family as the instant application (which it already does), but also sibling applications (i.e., applications sharing a parent with the instant application) and any other applications by the applicant covering the same or similar technology.

Continue reading

Tagged , , , ,

Is This the Beginning of the End for Accelerated Examination?

Author: Amanda K. Murphy, Ph.D.
Editor: Stephanie M. Sanders

In its August 16th Notice identifying a number of updates to the accelerated examination (AE) program, the USPTO announced that it also plans to seek public input on whether it should continue to offer the AE program at all. Under the AE program, which was implemented in 2006, an application will be advanced out of turn for examination if the applicant files a petition to make special with an appropriate showing. This showing requires the applicant to meet several conditions, including: (1) conducing a pre-examination search; (2) providing an accelerated examination support document (AESD); and (3) ensuring the application is complete under 37 C.F.R. § 1.51 at the time of filing. Citing the relatively low usage of the AE program since the implementation of Track I (the Notice reports that the USPTO has received fewer than 200 AE requests annually since 2011), the USPTO indicated that it plans to publish a request for comments on whether there is any value in retaining the AE program in view of the more popular Track I program.

The Notice also announced a number of updates to the AE program to reflect the changes in the law and examination practice that accompanied the America Invents Act (AIA), the Patent Law Treaties Implementation Act implementing the provisions of the Patent Law Treaty, and the USPTO’s adoption of the Cooperative Patent Classification System (CPC). These amendments:

Continue reading

Tagged , , , , , , , , , , ,

Proposed After-Final Initiative Merges the AFCP 2.0 and Pre-Appeal Conference

Author: Amanda K. Murphy, Ph.D.
Editor: Adriana L. Burgy

During the USPTO’s May 5th Quality Initiative Update, Assistant Deputy Commissioner for Patent Operations, Remy Yucel, announced a new proposed initiative to combine the AFCP 2.0 and Pre-Appeal Conference programs. The combined program will allow applicants to submit a pre-appeal brief conference request containing arguments and claim amendments within two months of receiving a final rejection. The submission will be considered by a panel that includes a neutral party, and the panel decision will be accompanied by comments regarding the grounds of rejection withdrawn or maintained. Thus, the proposed initiative will improve the current AFCP 2.0 program by affording applicants the opportunity to have amendments-after-final considered by a panel of examiners, rather than just the examiner of record. The proposed initiative will also improve the current Pre-Appeal Conference program by providing applicants with detailed comments regarding patentability, which are not provided under the current program. Thus, aside from the narrow two-month window for participating in the proposed combined program, the USPTO’s new initiative appears to be a win-win for patent applicants.

Continue reading

Tagged , , , , ,