By Donald Zuhn —

Updated First Office Action Estimator Tool Now Available

In a Patent Alert email distributed earlier today, the U.S. Patent and Trademark Office announced that an updated First Office Action Estimator online tool is now available to Applicants for use in obtaining time estimates for the issuance of first Office actions in applications.  The updated First Office Action Estimator online tool can be accessed here.

In announcing the availability of the updated tool, the Office noted that the methodology for assigning patent applications to Examiners had changed in FY 2021, and as a result, the First Office Action Estimator tool was updated to account for the new methodology.  The Office also noted that the estimates provided by the First Office Action Estimator are not guaranteed, and that a first Office action estimate will not be available for an application if the application has not yet been classified under the Cooperative Patent Classification (CPC).

USPTO Extends Modified COVID–19 Prioritized Examination Pilot Program

In a notice published last month in the Federal Register (86 Fed. Reg. 74406), the U.S. Patent and Trademark Office announced that it was extending the modified COVID–19 Prioritized Examination Pilot Program, and that requests to participate in the pilot program would be accepted until March 31, 2022.  The pilot program, which was implemented in May of 2020, allows applicants that qualify for small or micro entity status to request prioritized examination without paying the fees typically associated with such prioritized examination (see "USPTO Announces COVID-19 Prioritized Examination Pilot Program").

In addition to the requirement that applicants qualify for small or micro entity status, the claims of a participating application must cover a product or process related to COVID–19, and such product or process must be subject to an applicable FDA approval for COVID–19 use.  Such approvals may include, for example, an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA).  Other requirements for participating in the pilot program include making the request at the time of filing of a non-continuing original utility or plant nonprovisional application; at the time of filing of an original utility or plant nonprovisional application claiming the benefit of an earlier filing date under 35 U.S.C. §§ 120, 121, or 365(c) of one prior nonprovisional application or one prior international application designating the United States; or at the time of filing or after the filing of a Request for Continued Examination of a plant or utility application or a national stage of an international application.  However, any application that claims the benefit of the filing date of two or more prior filed nonprovisional U.S. applications or international applications designating the United States under 35 U.S.C. §§ 120, 121, or 365(c) is not eligible for participation in the pilot program.  In addition, requests to participate in the pilot program must include an Application Data Sheet, be made via the Office's patent electronic filing systems (EFS-Web or Patent Center), and qualifying applications cannot present more than four independent claims, more than 30 total claims, or any multiple dependent claims.

In announcing the extension of the pilot program, the Office noted that as November 29, 2021, 180 patents had issued from applications that had been accepted under the pilot program, and the average total pendency, from filing date to issue date, for those applications was 276 days.

As we reported in our recent "Top Patent Law Stories of 2021" webinar, of the 149 patents that recite "COVID-19" or "SARS-CoV-2" in the claims, 89 issued from applications that had been accepted under the pilot program, and the average total pendency for those applications was 280 days.  This compares favorably with the 41 patents that recite "COVID-19" or "SARS-CoV-2" in the claims where examination was accelerated under the Track One Prioritized Examination Program, and where the average total pendency was 259 days.

USPTO Announces Change in Electronic Retrieval of Priority Documents Between USPTO and EPO

In a notice published last month in the Official Gazette (1493 OG 877), the U.S. Patent and Trademark Office announced that as of January 1, 2022, electronic retrieval of priority documents between the USPTO and the European Patent Office will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS).  As a result, when claiming priority to a European patent application in a U.S. application filed on or after January 1, 2022, Applicants must submit the country code (i.e., EP), application number, filing date, and WIPO DAS access code associated with the European priority application that is to be retrieved from the EPO by the USPTO via the WIPO DAS.  The notice indicates that the foreign priority information section of the Application Data Sheet (form PTO/AIA/14) includes an access code field for providing the WIPO DAS access code.  For applications that were filed prior to January 1, 2022, Applicants are encouraged to voluntarily provide the WIPO DAS access code for EPO priority applications when submitting an Application Data Sheet for such applications.

Acknowledgement of WIPO DAS access codes will appear on U.S. application filing receipts.  The Office encourages Applicants to review filing receipts to verify that the Office has acknowledged submission of a WIPO DAS access code.  The Office's notice reminds Applicants that they continue to bear the ultimate responsibility for ensuring that the priority document is filed by the time limit set forth in 37 C.F.R. § 1.55.

The Office notes that the certified copy requirement of 35 U.S.C. § 119(b) and 37 C.F.R. § 1.55 is satisfied when a foreign priority document is retrieved electronically via the WIPO DAS during the pendency of the U.S. application.  The Office's notice also indicates that as of June 30, 2023, the USPTO will be unable to retrieve European priority applications without a WIPO DAS access code.

Further information on priority document exchange via WIPO DAS can be found on the USPTO's Electronic Priority Document Exchange (PDX) Program webpage.