81 FR 59197 - Request for Comments and Notice of Roundtable Event on Leveraging Electronic Resources To Retrieve Information From Applicant's Other Applications and Streamline Patent Issuance
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office Federal Register Volume 81, Issue 167 (August 29, 2016)
United States Patent and Trademark Office
Federal Register Volume 81, Issue 167 (August 29, 2016)
| Page Range | 59197-59199 | |
| FR Document | 2016-20703 |
[Federal Register Volume 81, Number 167 (Monday, August 29, 2016)] [Notices] [Pages 59197-59199] From the Federal Register Online [www.thefederalregister.org] [FR Doc No: 2016-20703] ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE United States Patent and Trademark Office [Docket No.: PTO-P-2016-0026] Request for Comments and Notice of Roundtable Event on Leveraging Electronic Resources To Retrieve Information From Applicant's Other Applications and Streamline Patent Issuance AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Notice of public meeting; request for comments. ----------------------------------------------------------------------- SUMMARY: The United States Patent and Trademark Office (USPTO) is continuing its efforts to expedite and improve the overall patent process. Accordingly, the USPTO is exploring how to best utilize available electronic resources to provide examiners with information (e.g., prior art, search reports, etc.) from applicant's other applications as early as possible to increase patent examination quality and efficiency. These other applications, for example, could have the same or substantially the same disclosure (e.g., domestic parent and counterpart foreign applications) as the U.S. application being examined. In addition to improving patent examination quality and efficiency, providing the examiner with this information from applicant's other applications will reduce applicant's burden to provide this information to the USPTO. Further, the USPTO is seeking to reduce the issuance time of a patent by eliminating potentially unnecessary information from the front page of the patent. In particular, the USPTO is seeking public comment on what information, beyond a copy of the specification and drawing that is required by statute, should be part of the patent considering that complete information concerning U.S. patents and U.S. patent application publications are accessible to the public via the Patent Application Information Retrieval (PAIR) system. To assist the USPTO in determining the best way to address these two topics, the USPTO is hosting a roundtable event to obtain public input. The roundtable will be open for any member of the public and will provide a forum for a discussion of the questions identified in this notice. Written comments in response to these questions set forth in this Notice also are requested. DATES: Event Date: The roundtable will be held on September 28, 2016, [[Page 59198]] beginning at 1:00 p.m. Eastern Daylight Time (EDT), and ending at 4:00 p.m. EDT. Roundtable Registration Deadline: Registration to attend the roundtable in person or via webcast is required by September 21, 2016. Additionally, requests to participate in the roundtable as a speaker must be submitted in writing no later than September 14, 2016. See the ``Event Registration Information'' section of this notice for additional details on how to register and how to request to present as a speaker. Written Comments: Written comments must be received on or before October 28, 2016. Written comments should be sent by electronic mail addressed to [email protected]. Comments also may be submitted by postal mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Michael Neas, Deputy Director, International Patent Legal Administration. Although comments may be submitted by postal mail, the USPTO prefers to receive comments by electronic mail. Comments will be available for public inspection via the USPTO's Internet Web site at http://www.uspto.gov/patent/laws-and-regulations/comments-public-response-specific-requests-uspto, and at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, VA 22314, upon request. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments. ADDRESSES: Event Address: The roundtable will be held in the USPTO Headquarters, Madison Auditorium, 600 Dulany Street, Alexandria, VA 22314. Event Registration Information: To register to attend or request to present as a speaker, please send an email message to [email protected] and provide the following information: (1) Your name, title, company or organization (if applicable), address, phone number, and email address; (2) whether you wish to attend in person or via webcast; and (3) whether you wish to make an oral presentation at the roundtable and, if so, which question(s) identified in part III of the SUPPLEMENTARY INFORMATION section of this notice will be addressed and the approximate desired length of your presentation. Each attendee, even if from the same organization, must register separately. In order to give all speakers a meaningful opportunity to speak, the USPTO may not be able to accommodate all persons who wish to make a presentation. However, the USPTO will attempt to accommodate as many persons as possible who wish to make a presentation. After reviewing the speaker requests and the information regarding the presentations provided in the requests, the USPTO will contact each speaker prior to the event with the amount of time available and the approximate time that the speaker's presentation is scheduled to begin. The amount of time available for each presentation may be limited to ensure that all persons selected to speak will have a meaningful opportunity to do so. Speakers who opt to employ slides as part of their presentation must send final electronic copies of the slides in Microsoft PowerPoint to [email protected] by September 21, 2016, so that the slides can be displayed at the roundtable. Additionally, the USPTO will provide an opportunity for persons in the audience to speak at the roundtable without a formal presentation. For more information on the roundtable, including webcast access instructions, agenda and a list of speakers, please visit https://www.uspto.gov/patent/initiatives/patent-application-initiatives/roundtable-discuss-leveraging-electronic-resources. If special accommodations due to a disability are needed, please inform the contact person(s) identified below. FOR FURTHER INFORMATION CONTACT: Requests for additional information should be directed to the attention of Jessica Patterson, Program Manager, International Patent Cooperation, by telephone at 571-272- 8828, or by email to [email protected]. SUPPLEMENTARY INFORMATION: I. Purpose of Notice: This notice announces a roundtable event to solicit stakeholder input concerning the questions identified in part III of this section. In particular, at the roundtable we seek to explore how the USPTO can better leverage applicant's other applications having the same or substantially the same disclosure (e.g., domestic parent and counterpart foreign applications (see MPEP 609.04(b)(V))) as the U.S. application under examination, to provide examiners with relevant information as early as possible. The USPTO believes that providing this information at the earliest possible stage of prosecution of the U.S. application can improve the examination efficiency and quality. The participants at the roundtable also will provide feedback on what information, beyond that of a copy of the specification and drawing set forth in 35 U.S.C. 154(a)(4), should be part of a patent considering that complete information concerning U.S. patents and U.S. patent application publications are accessible to the public via the PAIR system. The USPTO is also seeking written comments on the questions identified in part III of this section. The public is invited to provide comments on these questions or any other issues relevant to the consideration or development of the two topics discussed in this notice. Any member of the public, whether attending the roundtable or not, may submit written comments for consideration by the USPTO on any of the issues identified in this notice. II. Background: The USPTO strives to expedite and improve the overall patent application process by (1) increasing patent examination quality and efficiency, and (2) streamlining patent issuance after an application is allowed. (1) Increasing Patent Examination Quality and Efficiency Examiners consider information from various sources when making patentability determinations. One such source may be an information disclosure statement filed by the applicant. Another would be information identified by the examiner during his prior art search. For continuing applications, the examiner will also consider the information the USPTO previously considered during the examination of a domestic parent application (other than an international application that designated the U.S.). See section 609.02 of the Manual of Patent Examining Procedure (9th ed. 2015) (Rev. 07.2015, November 2015) (MPEP). The USPTO's work sharing efforts have resulted in the development of additional sources of information from foreign counterpart applications that is likely highly relevant to the U.S. application under examination. For example, Global Dossier, a work sharing initiative developed by the IP5 offices (USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People's Republic of China (SIPO)), provides U.S. examiners and the public access to the official file contents (e.g., prior art, search reports, office actions, etc.) of counterpart foreign applications. The USPTO is exploring how to better leverage the information contained in these counterpart foreign applications and other U.S. applications with the same or substantially the same [[Page 59199]] disclosure to improve examination efficiency and quality. The USPTO seeks, for example, the development of a system that utilizes both Global Dossier and the USPTO's internal databases to provide examiners with the information from counterpart foreign and domestic parent applications automatically at the earliest stage in prosecution of a U.S. application to improve the quality and efficiency of examination. Global Dossier and the USPTO's databases may contain information from applicant's other applications that are not a domestic parent application or a counterpart foreign application. In fact, the pool of applications available for monitoring for relevant information could be much larger (e.g., the database may contain information on applicant's other child applications or other applications that are indirectly related to the U.S. application through a priority claim). Numerous concerns, however, arise when determining how to effectively implement a system with a larger scope of applications than domestic parent and counterpart foreign applications. Similarly, numerous concerns arise when considering what information would be provided to an examiner from another of applicant's applications. For example, too many applications, like too many items of information, might present large amounts of information that has no relevance to the application being examined. The examiner's consideration of such information may result in the examiner not having time to fully consider information that is relevant, and possibly material, to the U.S. application under examination. The right balance of the scope of applications and information therein is critical to ensure examiners are provided with the most relevant information without overburdening them with immaterial and marginally relevant information. As part of its efforts to seek the right balance, the USPTO is requesting input on the best way it can ascertain the presence of these other applications having the same or substantially the same disclosure as the instant U.S. application under examination and import potentially relevant information contained therein. For instance, some applicants may prefer a fully automated system in which the USPTO monitors a set of applications that have been predefined by the USPTO, such as domestic parent and counterpart foreign applications, for certain information (e.g., prior art) to be imported into the U.S. application under examination. Other applicants may not desire that the USPTO import information from such a USPTO predefined set of applications, but instead, may prefer a set of applications defined by the applicant from which information is imported for consideration by the examiner. Still, other applicants may want to define both the set of applications and the particular information to be imported from these applications. In view of the different possible approaches for importing information, such as those mentioned herein, the USPTO would like stakeholders' input on what approach they believe the USPTO should consider implementing so examiners have the most pertinent information at the earliest stage of prosecution of the U.S. application. Furthermore, if the USPTO were to import information using any approach, the USPTO would like stakeholders' input on what documentation should be included in the record of the U.S. application under examination to accurately reflect that the information was imported and considered by the examiner. (2) Streamlining patent issuance after an application is allowed The USPTO is also considering what information, beyond the specification and drawings provided for in 35 U.S.C. 154(a)(4), should be part of a patent. This would include studying the degree to which the USPTO can migrate from the current paper-based process to 21st century processes that make greater use of the reality that complete information concerning U.S. patents and U.S. patent application publications is accessible to the public via the PAIR system. For example, the USPTO discontinued printing inventor address information in 2011 as this information is readily accessible via PAIR. See Elimination of an Inventor's Mailing Address on Patents and Application Publications, 1360 Off. Gaz. Pat. Office 197 (Nov. 23, 2010). The USPTO also eliminated the listing of prior art documents accessible in Public PAIR on reexamination certificates to expedite the issuance of reexamination certificates. See Elimination of the Listing of Prior Art Documents on Reexamination Certificates, 1371 Off. Gaz. Pat Office 95 (October 11, 2011). The USPTO is seeking public comment on what information (e.g., prior art references, classification information, etc.) should be retained on the face of the patent now that processing and examination is conducted in an electronic environment. III. Questions for Written Comments and Discussion at the Roundtable Event: The USPTO seeks written comments and participant feedback at the roundtable on the following questions related to how the USPTO should efficiently utilize information from applicant's other applications having the same or substantially the same disclosure to automatically provide U.S. examiners with relevant information at the earliest stage of examination and on what information should be part of a patent: 1. In balancing the goals of examination quality and efficiency, should the USPTO monitor other applications, besides domestic parent and counterpart foreign applications, for relevant information located therein for consideration in the instant U.S. application? If so, which other applications should be monitored (e.g., siblings, applications involving the same or related technology, etc.)? 2. What is the most convenient way to bring an application to the USPTO's attention that should be monitored for information during the examination of a U.S. application (e.g., automated system, applicant notifies the USPTO, etc.)? 3. How should the USPTO determine which information from the monitored applications to provide examiners while ensuring they are not overburdened with immaterial and marginally relevant information? 4. If the USPTO were to import information from applicant's other applications, how should the USPTO document the information imported into the image file wrapper of the instant U.S. application? For example, should the record reflect which domestic parent or counterpart foreign application the information was imported from, the date that the information was imported, and whether the examiner considered the imported information? 5. Taking into consideration the information that is publicly available in PAIR, what information should be part of a patent? For example, should prior art references and classification information still be listed on the front page of a patent? Dated: August 18, 2016. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2016-20703 Filed 8-26-16; 8:45 am] BILLING CODE 3510-16-P
![Federal Register / Vol. 81, No. 167 / Monday, August 29, 2016 / Notices 59197
Meeting Accessibility: Pursuant to 41 present oral comments at 4:25 p.m. on DEPARTMENT OF COMMERCE
CFR 102–3.140 through 102–3.165 and September 13, 2016. Those individuals
the availability of space, the meeting interested in making oral comments United States Patent and Trademark
scheduled for on September 13, 2016 should indicate their intent through the Office
from 12:30 p.m. to 5:00 p.m., September registration form and time will be [Docket No.: PTO–P–2016–0026]
14, 2016 from 8:00 a.m. to 5:00 p.m., allocated on a first-come, first-served
and September 15, 2016 from 8:00 a.m. basis. Time allotted for an individual’s Request for Comments and Notice of
to 12:00 p.m. at DOC is open to the comment period will be limited to no Roundtable Event on Leveraging
public more than 3 minutes. If the number of Electronic Resources To Retrieve
New Visitor Access Requirement: For Information From Applicant’s Other
registrants requesting to speak is greater
participants attending in person, please Applications and Streamline Patent
note that federal agencies, including than can be reasonably accommodated
during the scheduled public comment Issuance
DOC, can only accept a non-expired
state-issued driver’s license or periods, written comments can be AGENCY: United States Patent and
identification card for access to federal submitted in lieu of oral comments. The Trademark Office, Commerce.
facilities if such license or identification Advisory Committee expects that public ACTION: Notice of public meeting;
card is issued by a state that is statements presented at its meetings will request for comments.
compliant with the REAL ID Act of 2005 not be repetitive of previously
submitted verbal or written statements. SUMMARY: The United States Patent and
(Pub. L. 109–13), or by a state that has
Trademark Office (USPTO) is
an extension for REAL ID compliance. Registration: Individuals and entities continuing its efforts to expedite and
DOC currently accepts other forms of who wish to attend the public meeting improve the overall patent process.
federal-issued identification in lieu of a are required to pre-register for the Accordingly, the USPTO is exploring
state-issued driver’s license. Driver’s meeting by completing the online how to best utilize available electronic
licenses from six states and territories
registration form: http:// resources to provide examiners with
are not compliant and will not be
sncaadvisorycommittee.noaa.gov/ information (e.g., prior art, search
accepted as identification: Minnesota,
Illinois, Missouri, Washington, and Meetings.aspx. Anyone wishing to reports, etc.) from applicant’s other
American Samoa. In addition, DOC will attend this meeting must register by 5:00 applications as early as possible to
accept only enhanced driver’s licenses p.m. (EST), Tuesday, September 6, 2016. increase patent examination quality and
(identified by the American Flag on the Registered attendees will receive efficiency. These other applications, for
face of the card) from two states: security and campus instructions prior example, could have the same or
Minnesota and Washington State. For a to the workshop. On-site registration substantially the same disclosure (e.g.,
list of alternative identification, please will not be available for this meeting. domestic parent and counterpart foreign
visit: http://www.nist.gov/public_ Please note that seating is limited for applications) as the U.S. application
affairs/visitor/. public attendees, and will be granted on being examined. In addition to
Non U.S. Citizens Please Note: All a first come first serve basis. improving patent examination quality
foreign national visitors who do not and efficiency, providing the examiner
Additional Information: The with this information from applicant’s
have permanent resident status and who
Department of Commerce welcomes the other applications will reduce
wish to register for the above meeting
attendance of the public at its advisory applicant’s burden to provide this
must supply additional information.
Failure to provide this information prior committee meetings and will make information to the USPTO.
to arrival will result, at a minimum, in every effort to accommodate persons Further, the USPTO is seeking to
significant delays (up to 24 hours) in with physical disabilities or special reduce the issuance time of a patent by
entering the facility. Authority to gather needs. If you require special eliminating potentially unnecessary
this information is derived from United accommodations, please indicate your information from the front page of the
States Department of Commerce requirements on the online registration patent. In particular, the USPTO is
Department Administrative Order form. seeking public comment on what
(DAO) number 207–12. When on-line information, beyond a copy of the
FOR FURTHER INFORMATION CONTACT: specification and drawing that is
registration is open, the required
Laura Letson, Advisory Committee for required by statute, should be part of the
Foreign National form and instructions
the SNCA Executive Director, SSMC3, patent considering that complete
for transmittal via secure file transfer
will be available. The Foreign National Room 11359, 1315 East-West Highway, information concerning U.S. patents and
form needs to be submitted at least 7 Silver Spring, MD 20910; Email: U.S. patent application publications are
business days in advance of the Laura.Letson@noaa.gov; or visit the accessible to the public via the Patent
meeting. Advisory Committee Web site http:// Application Information Retrieval
Written Comments: Pursuant to sncaadvisorycommittee.noaa.gov1178. (PAIR) system.
section 10(a)(3) of the FACA and 41 CFR Dated: August 24, 2016. To assist the USPTO in determining
102–3.105(j) and 102–3.140, the public the best way to address these two topics,
Jason Donaldson,
or interested organizations may submit the USPTO is hosting a roundtable
Chief Financial Officer, Office of Oceanic and event to obtain public input. The
written comments to the Advisory
Atmospheric Research, National Oceanic and roundtable will be open for any member
Committee in response to the stated Atmospheric Administration. of the public and will provide a forum
jstallworth on DSK7TPTVN1PROD with NOTICES
agenda and meeting material. Meeting
[FR Doc. 2016–20705 Filed 8–26–16; 8:45 am] for a discussion of the questions
material, including work products will
be made available on the Advisory BILLING CODE 3510–22–P identified in this notice. Written
Committee’s Web site: http:// comments in response to these
sncaadvisorycommittee.noaa.gov/ questions set forth in this Notice also
Meetings.aspx. are requested.
Oral Comments: In addition to written DATES: Event Date: The roundtable will
statements, members of the public may be held on September 28, 2016,
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![Federal Register / Vol. 81, No. 167 / Monday, August 29, 2016 / Notices 59199
disclosure to improve examination USPTO import information from such a roundtable on the following questions
efficiency and quality. The USPTO USPTO predefined set of applications, related to how the USPTO should
seeks, for example, the development of but instead, may prefer a set of efficiently utilize information from
a system that utilizes both Global applications defined by the applicant applicant’s other applications having
Dossier and the USPTO’s internal from which information is imported for the same or substantially the same
databases to provide examiners with the consideration by the examiner. Still, disclosure to automatically provide U.S.
information from counterpart foreign other applicants may want to define examiners with relevant information at
and domestic parent applications both the set of applications and the the earliest stage of examination and on
automatically at the earliest stage in particular information to be imported what information should be part of a
prosecution of a U.S. application to from these applications. In view of the
patent:
improve the quality and efficiency of different possible approaches for
examination. importing information, such as those 1. In balancing the goals of
Global Dossier and the USPTO’s mentioned herein, the USPTO would examination quality and efficiency,
databases may contain information from like stakeholders’ input on what should the USPTO monitor other
applicant’s other applications that are approach they believe the USPTO applications, besides domestic parent
not a domestic parent application or a should consider implementing so and counterpart foreign applications, for
counterpart foreign application. In fact, examiners have the most pertinent relevant information located therein for
the pool of applications available for information at the earliest stage of consideration in the instant U.S.
monitoring for relevant information prosecution of the U.S. application. application? If so, which other
could be much larger (e.g., the database Furthermore, if the USPTO were to applications should be monitored (e.g.,
may contain information on applicant’s import information using any approach, siblings, applications involving the
other child applications or other the USPTO would like stakeholders’ same or related technology, etc.)?
applications that are indirectly related input on what documentation should be
to the U.S. application through a included in the record of the U.S. 2. What is the most convenient way
priority claim). Numerous concerns, application under examination to to bring an application to the USPTO’s
however, arise when determining how accurately reflect that the information attention that should be monitored for
to effectively implement a system with was imported and considered by the information during the examination of a
a larger scope of applications than examiner. U.S. application (e.g., automated
domestic parent and counterpart foreign (2) Streamlining patent issuance after system, applicant notifies the USPTO,
applications. Similarly, numerous an application is allowed etc.)?
concerns arise when considering what The USPTO is also considering what 3. How should the USPTO determine
information would be provided to an information, beyond the specification
which information from the monitored
examiner from another of applicant’s and drawings provided for in 35 U.S.C.
applications to provide examiners while
applications. For example, too many 154(a)(4), should be part of a patent.
This would include studying the degree ensuring they are not overburdened
applications, like too many items of
information, might present large to which the USPTO can migrate from with immaterial and marginally relevant
amounts of information that has no the current paper-based process to 21st information?
relevance to the application being century processes that make greater use 4. If the USPTO were to import
examined. The examiner’s consideration of the reality that complete information information from applicant’s other
of such information may result in the concerning U.S. patents and U.S. patent applications, how should the USPTO
examiner not having time to fully application publications is accessible to document the information imported into
consider information that is relevant, the public via the PAIR system. For the image file wrapper of the instant
and possibly material, to the U.S. example, the USPTO discontinued U.S. application? For example, should
application under examination. The printing inventor address information in the record reflect which domestic parent
right balance of the scope of 2011 as this information is readily or counterpart foreign application the
applications and information therein is accessible via PAIR. See Elimination of information was imported from, the date
critical to ensure examiners are an Inventor’s Mailing Address on
that the information was imported, and
provided with the most relevant Patents and Application Publications,
whether the examiner considered the
information without overburdening 1360 Off. Gaz. Pat. Office 197 (Nov. 23,
2010). The USPTO also eliminated the imported information?
them with immaterial and marginally
relevant information. listing of prior art documents accessible 5. Taking into consideration the
As part of its efforts to seek the right in Public PAIR on reexamination information that is publicly available in
balance, the USPTO is requesting input certificates to expedite the issuance of PAIR, what information should be part
on the best way it can ascertain the reexamination certificates. See of a patent? For example, should prior
presence of these other applications Elimination of the Listing of Prior Art art references and classification
having the same or substantially the Documents on Reexamination information still be listed on the front
same disclosure as the instant U.S. Certificates, 1371 Off. Gaz. Pat Office 95 page of a patent?
application under examination and (October 11, 2011). The USPTO is
Dated: August 18, 2016.
import potentially relevant information seeking public comment on what
contained therein. For instance, some information (e.g., prior art references, Michelle K. Lee,
applicants may prefer a fully automated classification information, etc.) should Under Secretary of Commerce for Intellectual
system in which the USPTO monitors a Property and Director of the United States
jstallworth on DSK7TPTVN1PROD with NOTICES
be retained on the face of the patent
set of applications that have been now that processing and examination is Patent and Trademark Office.
predefined by the USPTO, such as conducted in an electronic [FR Doc. 2016–20703 Filed 8–26–16; 8:45 am]
domestic parent and counterpart foreign environment. BILLING CODE 3510–16–P
applications, for certain information III. Questions for Written Comments
(e.g., prior art) to be imported into the and Discussion at the Roundtable Event:
U.S. application under examination. The USPTO seeks written comments
Other applicants may not desire that the and participant feedback at the
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Document Created: 2016-08-26 23:49:09
Document Modified: 2016-08-26 23:49:09
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Notices | |
| Action | Notice of public meeting; request for comments. | |
| Contact | Requests for additional information should be directed to the attention of Jessica Patterson, Program Manager, International Patent Cooperation, by telephone at 571-272- 8828, or by email to [email protected] | |
| FR Citation | 81 FR 59197 |
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