Response to USPTO Request for Public Comment on Enhanced Examination Timing Control Initiative

1. Response to USPTO Request for Public Comment on Enhanced Examination Timing Control Initiative July 20, 2010

2. Outline • Background on 3M Innovative Properties Company and 3M Company • Comments on USPTO Enhanced Examination Timing Control Initiative • Three-track examination system • Examining patent applications based on a prior, foreign-filed patent application • Supplemental searches July 20, 2010

3. 3M Innovative Properties Company (3M IPC) • 3M IPC is … • A wholly-owned subsidiary of 3M Company • The intellectual property operations company for the worldwide corporate 3M family • The owner or licensee of the intellectual property assets used by the 3M family globally • The recipient of 518 U.S. patents in 2009 • The owner of more than 10,000 pending U.S. patent applications and issued U.S. patents July 20, 2010

4. 3M Comprises Six Market-Leading Businesses Consumer and Office Display and Graphics Health Care Safety, Security and Protection Services Electro and Communications Industrial and Transportation © 3M 2010. All Rights Reserved. July 20, 2010

5. 3M’s Worldwide Strength July 20, 2010

6. Three-track Examination System • The system must appropriately balance: • The applicant’s desire for freedom of choice and adequate protection for inventions; • The USPTO’s need for an efficient, high-quality patent application examination process; and • The public’s interest in receiving timely notice about the scope of the patent rights and obtaining the economic benefits that flow from this such as stimulating investment and creating jobs • Conceptually, 3M supports a three-track examination system, provided that it is based on certain principles July 20, 2010

7. Principles for a Three-track Examination System • Does not favor or disadvantage applicants based on size or financial means • Track I fee is reasonable for applicants while allowing the USPTO to cover its costs • Does not discriminate against applicants based on where the application was first filed July 20, 2010

8. Principles for a Three-track Examination System • There is one queue for all accelerated or prioritized applications, provided that this does not undermine the reasons for having different queues in the first place • Pendency of Track II patent applications does not increase relative to today; ideally, it should decrease • Maximum delay under Track III is 30 months from the earliest priority date July 20, 2010

9. Questions and Suggestions for Three-track Examination System • In general … • How will currently pending applications and later-filed applications that claim priority to a currently pending application be handled once a three-track system starts? • According to the Federal Register, the USPTO “intends to harmonize the existing examination procedures for applications having been granted accelerated or “special” status…” Given the different eligibility requirements and procedures for these applications, how does the USPTO intend to achieve harmonization? • Will the USPTO pilot this system before launch? July 20, 2010

10. Questions and Suggestions for Three-track Examination System • Relating to fees … • Applicants can move among the different tracks and may select them at different times. Will fees be adjusted to reflect this; e.g., by reducing fees for applicants who opt into Track I only at the appeal stage, or in other ways? • The Track I participation fee has been described as “substantial.” What is the USPTO’s estimate of this fee and how was it reached? • The Federal Register refers to a “surcharge” for Track III? How much is the surcharge and what is its purpose? • The Federal Register mentions deferring Track III fees? How will this work? July 20, 2010

11. Questions and Suggestions for Three-track Examination System • Regarding Track I … • The USPTO’s goal is to mail a notice of allowance in one year. How will the USPTO (further) incentivize the use of compact prosecution techniques such as telephonic restrictions, first action interviews, other interviews, effective after final practice, etc. to help achieve this goal? July 20, 2010

12. Questions and Suggestions for Three-track Examination System • Regarding Track III … • Are there data supporting the assumption that Track III will significantly increase the abandonment rate prior to the USPTO acting on a case? • Track III may be requested upon filing or in reply to receiving a missing parts notice. Why is Track III not available any time prior to the USPTO taking up the case for examination? • Is the 30 month delay calculated from the earliest priority date, the U.S. filing date, or some other date? July 20, 2010

13. Questions and Suggestions for Three-track Examination System • Regarding Track III …, continued • Has the USPTO considered other incentives to encourage applicants to abandon patent applications, whether or not they are on Track III, such as: • Subsequent to filing, requiring applicants to separately request / pay for examination; • At least partially refunding previously paid fees upon abandonment; and • For each abandoned Track III case, allowing applicant to put a case on Track I or II at a reduced fee? July 20, 2010

14. Examining Patent Applications Based on a Prior, Foreign-filed Patent Application • 3M appreciates the USPTO’s desire to reuse the work generated by the office of first filing (OFF) but does not support this element of the initiative • It discriminates among applicants based on the country where the patent application was first filed; long delays in the OFF before or during initial examination penalize the applicant at the USPTO • Delayed USPTO examination frustrates the goal of providing the public with notice about the scope of the patent rights July 20, 2010

15. Examining Patent Applications Based on a Prior, Foreign-filed Patent Application • To avoid delay in the USPTO, applicants may have to request and pay for accelerated examination in the OFF (if available) just to place their U.S. patent application on Track II • The USPTO’s objective will be undermined if applicants circumvent this requirement by “forum shopping” (i.e., filing first in the USPTO) • If foreign patent offices retaliate by adopting parallel rules, then U.S. applicants who file in these patent offices will be disadvantaged July 20, 2010

16. Questions and Suggestions for Examining Patent Applications Based on a Prior, Foreign-filed Patent Application • Has the USPTO considered the EPO’s R. 161(1) approach? • If the EPO issued a WO (as the ISA) or an IPRP (as the IPEA), then applicant must answer this first to avoid withdrawal in the European phase • Has the USPTO considered other ways to reuse work generated during PCT Chapter I (ISR / WO of ISA) and Chapter II (IPRP of IPEA), beyond PPHs? July 20, 2010

17. Questions and Suggestions for Examining Patent Applications Based on a Prior, Foreign-filed Patent Application • This appears to overlap with other programs (e.g., PPHs between USPTO and other patent offices, SHARE project with the KIPO, similar efforts with EPO and JPO). How are these efforts related and how will they be coordinated? July 20, 2010

18. Supplemental Searches • 3M is neutral with respect to this element, but questions whether it is needed and its value • It is unclear who will benefit from this • Applicants who first file outside the U.S., U.S. first-filers who subsequently file outside the U.S., and U.S. first-filers who do not file outside the U.S. but who conducted a pre-filing search already have (or will receive) what is, in essence, a supplemental search July 20, 2010

19. Supplemental Searches • In light of this, is this the best use of the USPTO’s limited resources? • It will take time for the USPTO to negotiate and implement appropriate arrangements with foreign patent offices • How will the USPTO handle requests to provide reciprocal search services to the other patent offices? July 20, 2010

20. Summary • 3M supports a three-track examination system, provided that it is based on certain principles • 3M does not support the proposal for examining patent applications that are based on a prior, foreign-filed patent application • 3M is neutral on the supplemental search plan • 3M appreciates the opportunity to provide comments and looks forward to further discussions with the USPTO on the Enhanced Examination Timing Control Initiative July 20, 2010