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“Welcome to the Table” May 15, 2006 Jay Lucas Deputy Commissioner for Patent Examination Policy

“Welcome to the Table” May 15, 2006 Jay Lucas Deputy Commissioner for Patent Examination Policy. First Course - Appetizers. The Need for Change The Challenges of the Corps. Patent* Applications Filed. FY 05 plan 375,080 (5.5% above FY 04) FY 05 actual 384,228 (8.1% above FY04)

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“Welcome to the Table” May 15, 2006 Jay Lucas Deputy Commissioner for Patent Examination Policy

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  1. “Welcome to the Table” May 15, 2006 Jay Lucas Deputy Commissioner for Patent Examination Policy

  2. First Course - Appetizers The Need for ChangeThe Challenges of the Corps

  3. Patent* Applications Filed • FY 05 plan 375,080 (5.5% above FY 04) • FY 05 actual 384,228 (8.1% above FY04) • 2.6% over plan Patent* - in this instance refers to only utility, plant and reissue applications

  4. First Action Pendency by Art Areas 1“Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005.

  5. “So Go and Hire Some Examiners”

  6. Pendency Reduction Action Plan (8.1% filing growth rate)

  7. Update on Published NPRs Claims and Continuations Jay Lucas

  8. Claims-Continuations Update 1. Notices of proposed rule makings (NPRMs) concerning claims and continuing applications were published on January 3, 2006  2. The comment period for these NPRMs closed on May 3, 2006 188 comments on the claims NPRM received   334 comments on the continuing applications NPRM received  

  9. What suggestions would you make? • What changes would you make to the notice of proposed rule making for the examination of claims? • What changes would you make to the notice of proposed rule making for the practice of continuing applications?

  10. Second Course – Dinner is Served Initiatives On the Table

  11. Many New Policy Initiatives and Potential Projects • Accelerated Examination • Markush or Other Alternative Language • Preexamination Search Report • Information Disclosure Statements • Notice of Inquiry – Inequitable Conduct • Peer to Peer Pilot • Deferred Examination

  12. Third Course – Dessert The Sweet Things in Life

  13. Sweets and Treats • Priority Document Exchange • EFS-Web

  14. Overview How EFS-Web Works • New Application • Design • Utility • Provisional • 371 Access EFS-Web As Unregistered Filer User Accesses USPTO Portal • New Application • Design • Utility • Provisional • 371 • Existing Application • Saved Package • Last 20 EFS receipts Authenticate as Registered Filer Enter Key Bibliographic Data (New Only) Attach PDF Files Upload and Validate Calculate Fees (Optional) Submit Choose Payment Options Pay Fees Via RAM Interface Receive Acknowledgement Receipt Access Filing in Private PAIR(Registered Filer Only)

  15. EFS-Web Benefits • Requires no changes toyour existing patent application authoring process • Eliminates charges for Express Mail & couriers • Eliminates possibility of losing applications enroute to USPTO • Dramatically reduces paper and file storage costs • Allows online collaboration among IP professionals who can file applications and papers anywhere, anytime • Plays a vital role in strengthening the U.S. IP system

  16. EFS-Web Benefits • Safe • EFS-Web submissions protect your filing date just like a post card receipt • Simple • Even the largest and most complex patent applications can be submitted using PDF files and a few web screens • Secure • EFS-Web submissions are protected through Digital Certificates, the most secure method now available

  17. EFS-Web Benefits • Fast • Patent applications and documents can be submitted and a receipt obtained in minutes • Flexible • Requires NO changes to the processes & tools you use to author patent applications and documents • Forgiving • Checks documentsbefore submission to ensure compatibility with USPTO standards

  18. Contact Information Jay Lucas Deputy Commissioner for Patent Examination Policy e-mail: jay.lucas@uspto.gov Phone: 571-272-8800

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