The 21st Century USPTO: Using Electronic Resources to Increase Examination Quality and Reduce Time From Allowance to Issuance

In its August 29th Federal Register Notice, the USPTO announced that it will be hosting a roundtable event on September 28, 2016 at its headquarters in Alexandria, VA, to obtain public comment on the following topics related to utilizing electronic resources to streamline the patent examination and issuance processes.

1. How can the USPTO best utilize available electronic resources (e.g., PAIR, Global Dossier), to provide examiners with information (e.g., references, search results) from an applicant’s other applications as early as possible to increase patent examination quality and efficiency?
2. How can the USPTO reduce the time between allowance and issuance by no longer printing potentially unnecessary information on the front page of a patent?

Regarding the first point, the USPTO is specifically seeking public input on the question of whether, for a given application being examined, the Office should monitor other applications submitted by the applicant for relevant information contained therein. Relevant information may include references cited by the applicant, references identified by an examiner, search reports, and the like. The Office is considering monitoring not just applications and patents in the same family as the instant application (which it already does), but also sibling applications (i.e., applications sharing a parent with the instant application) and any other applications by the applicant covering the same or similar technology.

If such monitoring is desirable, the USPTO seeks input as to which other applications it should be monitoring (i.e., should such monitoring include sibling applications, applications related to similar technology, and/or any other applications), how such applications should be identified (i.e., by the Office or by applicant), and how to inform the public that information from such applications was considered by the examiner of record (i.e., by apparition number, by listing the specific information considered).

When responding to these questions, the public is asked to keep in mind that the Office is seeking to balance the need for examiners to have access to potentially relevant information as early as possible in the examination process, while not being overburdened with potentially immaterial or marginally relevant information. In addition to improving patent examination quality and efficiency, the Office also hopes that any new policies in this realm will reduce the burden on applicants to track and provide such information.

As to the second point, the Office notes that in the past it has discontinued the inclusion of various types of information on the front page of a patent when such information is readily available through the Public PAIR system. In 2011, the Office discontinued printing inventor address information on the front page of a patent. Later that that same year, a listing of prior art documents was removed from reexamination certificates.

The USPTO’s interest in removing potentially unnecessary information from the front page of the patent is related to its goal of migrating from its current paper-based printing process to a 21st century process that reflects the reality that complete information concerning U.S. patents and published applications is already accessible to the public online. As such, the Office is seeking public input on the type(s) of information that can be removed from the front page of a patent. The Office notes that a listing of prior art references and classification information might be good candidates for removal.

Written comments must be received by October 28, 2016. Information about how to register to attend, or present at, the roundtable event on September 28th is included in the Notice.