By Donald Zuhn —

USPTO Announces Expansion of eMod Text Pilot

In August 2015, the U.S. Patent and Trademark Office announced that it would begin implementing a new system that would eventually replace the EFS-Web, Public PAIR, and Private PAIR (see "USPTO News Briefs," August 9, 2015).  According to the Office, the new initiative, eCommerce Modernization (eMod), is intended to improve the electronic patent application process by modernizing the filing and viewing systems, and will be implemented in phases over the next few years.

Last month, the Office announced via a Patent Alert e-mail that it was expanding the eMod Text Pilot Program.  As part of that expansion, participants in the pilot program will be able to access new system functionality such as the ability to submit text and receive Office actions in text.  The Office continues to seek new participants for the pilot program, but encourages those interested in participating in the pilot program to carefully review the eMod Text Pilot Participant Guidelines, which describes the use of the Text features offered in the pilot.  Those wishing to participate in the pilot program must fill out a participation form.

The Office's latest announcement indicates that the goal of the eMod Text Pilot Program is to have applicants utilize new features to file patent applications in text, and provide feedback to the eMod Team for further improvements.  Additional information regarding the eMod Text Pilot Program can be found at the eMod Participant Programs webpage.

Changes to Conditions under which ILPO May Act as ISA/IPEA for PCT Applications Filed with RO/US

Late last year, the U.S. Patent and Trademark Office announced in the Official Gazette (1432 OG 264) that the conditions under which the Israel Patent Office (ILPO) would act as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for International applications filed with the U.S. Patent and Trademark Office (USPTO) as a Receiving Office (RO/US) had changed.  In particular, the restriction against the ILPO acting as an ISA for applications containing one or more claims directed to a business method (as defined by specified areas of the International Patent Classification System) has been removed.  In addition, instead of limiting the number of applications the ILPO can receive from the USPTO to 75 per fiscal quarter, the ILPO will now take up to 100 applications per fiscal quarter.

The changes are part of a new agreement that was signed in April 2016 by the Director of the USPTO and Director of the ILPO and Commissioner of Patents, Designs and Trademarks.  According to the agreement, the ILPO may act as an ISA under the PCT for International applications filed with the RO/US provided that: (1) the applications are submitted in the English language; (2) the ILPO has not received more than 100 international applications from the USPTO during a fiscal quarter; and (3) the ILPO is chosen as a competent authority by the applicants of said applications.  The ILPO will also act as an IPEA if these three requirements are met, and the ILPO acted as the ISA.

The USPTO's announcement indicates that the search fee for the ILPO acting as an ISA for international applications received by the USPTO is $912 (USD), which the USPTO will collect and transmit to the ILPO.

USPTO Announces Continuation of IP5 PPH Pilot Program

In November, the U.S. Patent and Trademark Office announced that the IP5 offices — the USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People's Republic of China (SIPO) — have agreed to extend the IP5 Patent Prosecution Highway (PPH) pilot program to January 5, 2020.

The IP5 PPH pilot program enables applicants who receive a positive ruling on patent claims from one of the IP5 offices to request accelerated prosecution of corresponding claims in another IP5 office.  A discussion of the requirements for participation in the IP5 PPH can be found here.

By Donald Zuhn —

Last month, the U.S. Patent and Trademark Office published a notice in the Federal Register (82 Fed. Reg. 3758) requesting comments from stakeholders regarding whether the accelerated examination program should be retained or discontinued.  The Office notes that while the accelerated examination program, which was implemented in August 2006, was once relatively popular, fewer than 250 applications were accepted into the program annually between 2012 and 2015.  As a result, the Office is now seeking stakeholder feedback as to whether the program provides a sufficient benefit to the public to justify the cost of implementation.

Part of the decrease in the popularity of the accelerated examination program may be due to the creation in September 2011 of the prioritized examination ("Track One") program under the Leahy-Smith America Invents Act.  In contrast with the accelerated examination program, where applicants must file a petition to make special and perform a pre-examination search, the Track One program requires that applicants simply pay an additional fee to advance an application out of turn.  According to the Office's notice, since the Track One program was implemented, the number of annual requests has approached 10,000.

The notice also suggests that the drop in accelerated examination requests may be attributable in part to a recent decrease in overall first action pendency.  From FY 2006 to FY 2011, when the accelerated examination program was the only option available, average first action pendency increased from 22.6 months to 28.0 months (the latter being an 11-year high), but from FY 2012 to FY 2016, first action pendency decreased from 21.9 months to 16.2 months (the latter being an 11-year low).  In addition, average total pendency increased from 31.1 months in FY 2006 to an 11-year high of 35.3 months in FY 2010, and then decreased from 33.7 months in FY 2011 to an 11-year low of 25.3 months in 2016.  Average first action pendency (blue line) and average total pendency (orange line) from FY 2006 through FY 2016 are shown in the chart below (click on chart to expand).

In the notice, the Office suggests that "[a] lower first action pendency and lower accelerated examination numbers seem to indicate that applicants have less need for as many programs that expedite patent examination."  Comments regarding the retention or discontinuation of the accelerated examination program can be submitted by e-mail to AEcomments2016@ uspto.gov, or by regular mail addressed to:  Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Pinchus Laufer, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.  Comments must be received by the Office by March 13, 2017 to be ensured of consideration.