Category Archives: Pilot Programs

Cancer Immunotherapy Pilot Program Set to Expire in June Unless Extended

Author: Rachael P. Dippold, Ph.D.
Editor:  Amanda K. Murphy, Ph.D.

Last year, President Obama announced the National Cancer Moonshot, an initiative with the goal of making ten years’ worth of advances in cancer research and treatment over the following five years.  In support of this initiative, the USPTO announced its “Patents 4 Patients” program, also known as the Cancer Immunotherapy Pilot Program.  Through this pilot program, which began June 29, 2016, applications directed to cancer immunotherapy are provided special status for examination, with the goal of completing prosecution within 12 months of the grant of special status.  Continue reading

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USPTO Seeks Your Input on the Future of IDS Practice

Author: Michelle Pacholec Ph.D.
Editor: Stephanie M. Sanders

During the USPTO’s September 13th Patent Quality Chat, the Office provided additional details regarding its announcement that it is seeking to implement a program that will alleviate applicants’ burden in bringing references cited in related applications to the attention of the Office. As we previously reported, the USPTO is exploring how to best utilize available electronic resources to automatically provide examiners with access to information (e.g., prior art, search reports, etc.) from related applications with the aim of increasing patent examination quality and efficiency. Related applications might include, for example, domestic child or parent applications and foreign counterparts.

In particular, the USPTO highlighted the potential use of Global Dossier, which currently permits the sharing of filewrapper information across the world’s five largest patent offices (USPTO, JPO, EPO, SIPO, and KPO) to the public and to examiners in each office. The Office suggested, for example, that search and examination information created by a foreign office could automatically be imported into a pending related U.S. application, giving Examiners early and immediate access to potentially relevant prior art. Although this initiative is still in the exploratory phase, if implemented, such a program could represent a significant reduction in applicant burden and expense. When asked whether this proposed system could extend to domestic applications being prosecuted in parallel by the same applicant, though the applications are not within the same family, the USPTO stated that was also a topic for consideration.

The USPTO also stated that it is considering removing the listing of “References Cited” from the front page of patents. This information can easily be accessed electronically, noted Deputy Commissioners Powell and Bahr, and removing it, perhaps along with other front page information, would streamline the issuance process.

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Should the Extended Missing Parts Pilot Program be Extended Indefinitely?

Author: Shing-Yi (Cindy) Cheng Ph.D.
Editor: Stephanie M. Sanders

In its September 6th Federal Register Notice, the USPTO has requested public comment on whether it should make the Extended Missing Parts Pilot Program permanent. The USPTO implemented the Extended Missing Parts Pilot Program on December 8, 2010. Under the pilot program, an applicant can request a 12-month time period to pay certain government fees when filing a nonprovisional patent application. These fees are the

  • search fee,
  • examination fee,
  • any excess claims fees, and
  • the surcharge (for the late submission of the search fee and the examination fee).

To qualify for participation in the program, the following conditions must be satisfied:

  • the applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing using form PTO/AIA/421,
  • the application must be an original (i.e., not a Reissue) nonprovisional utility or plant application filed within the duration of the pilot program;
  • the nonprovisional application must directly and properly claim the benefit of a prior provisional application filed within the previous 12 months, and the specific reference to the provisional application must be in an ADS; and
  • the applicant must not have filed a nonpublication request.

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Post Grant Outcomes Program Has Taken Off

Author: Hojung Cho, Ph.D.
Editor: Stephanie M. Sanders

During its most recent Patent Public Advisory Committee (PPAC) meeting, the USPTO shared an update on the Post Grant Outcomes (PGO) Pilot program, which commenced in April of this year. As we previously reported, the PGO program was initiated to identify those patents being challenged at the PTAB that have pending related applications and provide the examiners of those pending related applications access to the prior art submitted with the post grant proceeding petition. The three stated objectives of the PGO are (1) enhanced patentability determinations in related child cases, (2) targeted examiner training, and (3) examining corps education. The USPTO has generally assessed that the PGO program has met its goal of shining a spotlight on highly relevant prior art uncovered in post grant proceedings and, thus, has enhanced the determination of patentability in related child cases.

As of July 2016, 678 child applications have been identified as meeting the program criteria. Here is the breakdown by technology center.

post-grant-outcomes-infographics-prosecution-first-tech-center

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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:

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