AIPLA Comments: Enhanced Examination Timing Control Initiative (“3-Track”)

1. AIPLA Comments:Enhanced Examination Timing Control Initiative (“3-Track”) Q. Todd Dickinson Executive director, American intellectual property law association (AIPLA) USPTO Public meeting July 20, 2010

2. EETC Initiative • 3-Track Options • Track 1 – Acceleration for a fee • Track 2 – “Traditional examination” timing • Track 3 – Deferred examination • Handling of first-filed-foreign applications • Supplemental search

3. Track 1:  Accelerated Examination • Our understanding of Track 1 is as follows: • Based on a simple request and cost-recovery fee. • Application will be put into either: • (i) a single queue with applications from other existing acceleration programs, or • (ii) in a separate “Track 1” queue. • FOA within 4 months (target) from the grant of prioritized status (entry into the queue). • Final disposition within 12 months (target) from the grant of prioritized status (entry into the queue). • Additional resources from fees deployed to meet these deadlines without delaying Track 2 applications.

4. Track 1:  Accelerated examination (cont’d) If our understanding is correct, we see this part of the proposal in a generally positive light.

5. Track 1:  Accelerated examination (cont’d) • Strength of support dependent on at least the following: • First permanently ending fee diversion. • No consequential delays for Track 2 applications. • Available for all applications, including Paris Priority applications. • Limit on number of claims should be raised, e.g. to 6 independent and 40 total.

6. Track 1:  Accelerated examination (cont’d) • Cost-Recovery Questions • Magnitude of the acceleration fee may discourage use. • PPH: Possible detrimental effect on U.S. applicants who want to use PPH in other offices. • USPTO accelerated examination necessary. • If the cost-recovery fee is prohibitive, it will adversely affect U.S. applicants’ ability to benefit from PPH. • Impact of small and micro entity discounts.

7. Track 2:  The Current Process • Continuation of current examination process as default process generally acceptable. • Current timing should not be delayed by other aspects of proposal, in particular, accelerated examination under Track 1.

8. Track 3:  Deferred Examination •  AIPLA has traditionally opposed deferred examination • Commented in January 2009. Did not oppose deferred examination, if certain issues were addressed. • Few of those concerns seem to be addressed in the 3-track initiative. • Deferred examination already available under 37 CFR 1.103(d), although the fees must be paid up front (rarely used?).

9. Track 3:  Deferred Examination (cont’d) • For us to consider support for deferred examination at this time, it should include, inter alia:  • Mandatory 18-month publication • Search, preferably prior to publication (e.g., PCT) • Possibility of third party requests for examination, perhaps including the option of accelerated examination • A timely first office action after the deferral period ends • Clarification of patent term adjustment • Intervening rights

10. Track 3:  Deferred Examination (cont’d) • Additional issues: • Data to support actual reduction in workload?  • Possible filing increase for business strategy reasons? • Duplicative of or in conflict with PCT. • Gaming? • More filing of questionable applications? • Switching between tracks. • Continued uncertainty.

11. Track 3: Deferred Examination (cont’d) • Additional issues: • Unintended consequences? • Pilot project? • Sunset?

12. Patent Term Adjustment (PTA) • Reducing PTA for delayed examination via Track 3 is appropriate. • Significant questions regarding how “average pendency” determined. • Applying PTA reduction to SHARE possibly discriminatory? • More time and details needed.

13. First-filed-foreign Applications • Our understanding of the proposal for handling Paris priority applications is as follows: • If a U.S. applicant claims a foreign priority, the application will be set aside. • When and if the applicant submits a foreign search report, office action, and US-style response to the office action, the application will be put into the examination queue. • The applicant could at that time request accelerated examination under Track 1. • If the foreign application was allowed, the applicant would not have to provide the search, office action or response, but only provide a notice to that effect to the USPTO. (IQ issues?) • If the foreign application was not allowable, the applicant could also submit an amendment, but would have to include arguments as to why the claims are patentable in the U.S.

14. First-filed-foreign Applications (cont’d) • Based on our understanding, we have many concerns about this proposal • Adverse impact foreign-based applicants. • Indications from sister IP associations abroad of strong opposition. • Retaliation risk from other offices, with detrimental effects on US patent owners. • Contrary to harmonization principles.

15. First-filed-foreign Applications (cont’d) • Will this proposal lead to a reduction of workload at the USPTO? • Possible actual increase in USPTO workload, i.e., foreign applicants may choose to file first in the USPTO, or to file simultaneously with their home filing, in order to avoid “mandatory deferral,” and also to benefit from the availability of accelerated examination under Track 1. • Downplays PCT as a major means to achieving work sharing.

16. First-filed-foreign Applications (cont’d) • Trilateral and IP5 talks on international work sharing, including SHARE. • These discussion should continue. • Additional information needed on JPO and EPO handling of this issue, e.g., JP First and PACE/European Utilization Project. • SHARE should continue to be discussed in the context of other international work sharing initiatives such as PPH, PCT-PPH, CAF, CCD, etc. • We do agree that these discussions should be substantially accelerated.

17. Supplemental Search • No objections in principle. • Issues/concerns: • Commitments from other offices? • How will it be used by USPTO? • Effect on legal issues (presumption of validity, IC, etc.) • Undesirable outsourcing by other office? • Reciprocal commitment by USPTO increasing workload? • Interface with currently available resources? • Pricing?

18.  Thank You tdickinson@aipla.org