Tuesday, March 08, 2005

USPTO UNVEILS 3 INITIATIVES TO IMPROVE PATENT PROCESS: The Director of the USPTO, Jonathan Dudas, announced a three-part initiative to improve the agency's processes for handling patent applications. The initiative was announced at a March 4 press briefing in Chicago.

(1) The first change to be implemented is a pre-appeal-brief conference to be held after an unsuccessful patent applicant has filed a notice of appeal, signaling their intent to challenge the examiner's rejection of the patent at the PTO's Board of Patent Appeals and Interferences. Before the applicant files a brief in the appeal, the PTO will convene a conference of three examiners--the examiner assigned to the application, that examiner's supervisor, and a senior examiner--who will review the file to decide whether to maintain the PTO position, or instead to allow the patent or reopen the application for further prosecution. Applicants will be required to request the conference in writing, identifying the rejections that they intend to challenge, and the reasons for those challenges. If the PTO decides not to contest the appeal, this intermediate reassessment of the case could spare the applicant the unnecessary expense of the appeal brief. For example, appeal briefs cost an average of $5,000 per case. The savings overall from the 9,000 appeals filed annually could amount to $30 million. Avoiding the need for briefing in complex appeals could produce even greater savings.

(2) The second component of the PTO's planned improvements is to "clean up" the backlog of pending ex parte patent reexamination cases. The agency will accomplish this goal by instituting a new panel review process, similar to the pre-appeal-brief conference, to consider each reexamination action on its merits. The panel, made up of senior and supervisory examiners as well as a reexamination specialist, will produce a "second office action" in each case that will be a final ruling on the merits.

(3) The third component is the search for prior art that is part of the patent reexamination process. To be an aide and improve the reliability of the patent search, the PTO will develop a "search template" for each of the more than 600 classes of patents in the PTO system. The references that comprise the search templates will be drawn from U.S. patents, foreign patents, and non-patent literature. The PTO hopes to produce the first templates for public comment by July. Such a search grid is already available in the business method patent Class 705. This augmented search tool will also assist the PTO in its hiring of contractors for the pilot outsourcing project underway for PTO searches, and it will let the other two trilateral patent office members--the European Patent Office and Japanese Patent Office--know what the PTO regards as relevant prior art.

2 Comentários:

Norm said...

The PTO's plan to develop "search templates" for over 600 classes is a long over due and fairly simple improvement but the real challenge is continually updating the template. Core resources identified in a template can become static and can take years for a bureaucracy to identify, approve and include new resources.

Patent search professionals are always updating their search strategies and resources to locate relevant prior art. This community is itself a valuable resource the PTO should utilize more often.

The PTO's NPL core databases for Class 705 can be found here...

http://www.uspto.gov/web/menu/busmethp/
figurenpl.htm

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