Community Patent Robert Clarke – Deputy Director Office of Patent Legal Administration

Community Patent Robert Clarke – Deputy Director

Office of Patent Legal Administration

[email protected]

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Public Interest in Community PatentPublic Interest in Community Patent

Leverage private sector knowledge base to provide prior art to the Office before patents are granted Leverage existing technology for collaborative filtering to provide best prior art to the Office Provide peer review of applications

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Currently Available USPTO procedureCurrently Available USPTO procedure

37 CFR 1.99 – See MPEP 1134.0137 CFR 1.99 – See MPEP 1134.01• Permits third parties to submit prior art after publication Permits third parties to submit prior art after publication

of an applicationof an application• Limitations:Limitations:

• ContentContent• TimingTiming• ParticipationParticipation

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Rule 1.99 LimitationsRule 1.99 Limitations

• ContentContent• Only patents and publications may be Only patents and publications may be

submittedsubmitted• No discussion or highlighting of No discussion or highlighting of

documents permitteddocuments permitted• No more than 10 documents per No more than 10 documents per

submissionsubmission

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• TimingTiming• Within two months of publication of the Within two months of publication of the

application; andapplication; and• No later than mailing of notice of allowanceNo later than mailing of notice of allowance

• NOTE: inherent delays in examination due to NOTE: inherent delays in examination due to backlogs often make this limitation irrelevant.backlogs often make this limitation irrelevant.

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• ParticipationParticipation• The Office will not communicate with The Office will not communicate with

the third party submitter of a rule 1.99 the third party submitter of a rule 1.99 submission except to:submission except to:• Mail a return post card, if any; andMail a return post card, if any; and• Process the fee for the submission.Process the fee for the submission.

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• Formality Review by the OfficeFormality Review by the Office• Staff other than the examiner of record Staff other than the examiner of record

review 1.99 submissions for compliance review 1.99 submissions for compliance with the content and timeliness with the content and timeliness requirements.requirements.

• Informal submissions are discarded and Informal submissions are discarded and are not available to the examiner.are not available to the examiner.

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• By statute some applicants may opt out of publication ifBy statute some applicants may opt out of publication if• applicant makes a request upon filing, certifying that the applicant makes a request upon filing, certifying that the

invention disclosed in the application has not and will not be invention disclosed in the application has not and will not be the subject of an application filed in another country, or the subject of an application filed in another country, or under a multilateral international agreement, that requires under a multilateral international agreement, that requires publication of applications 18 months after filing. publication of applications 18 months after filing.

• NOTE: the Office’s 21NOTE: the Office’s 21stst Century Strategic Plan included a Century Strategic Plan included a recommendation that legislation to eliminate this ability be recommendation that legislation to eliminate this ability be implemented. See implemented. See http://www.uspto.gov/web/offices/com/strat21/action/lr1hp67.htm

http://www.uspto.gov/web/offices/com/strat21/action/lr1hp67.htm

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• Statutory reasons for the limitationsStatutory reasons for the limitations• 35 USC 122(c) PROTEST AND PRE-ISSUANCE 35 USC 122(c) PROTEST AND PRE-ISSUANCE

OPPOSITION provides: OPPOSITION provides: • The Director shall establish appropriate procedures to The Director shall establish appropriate procedures to

ensure that no protest or other form of pre-issuance ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may opposition to the grant of a patent on an application may be initiated after publication of the application without the be initiated after publication of the application without the express written consent of the applicant.express written consent of the applicant.

• The Office’s 21The Office’s 21stst Century Strategic Plan did Century Strategic Plan did notnot recommend a legislative change to recommend a legislative change to remove this requirement.remove this requirement.

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OMB Circular No. A-130 Limitations OMB Circular No. A-130 Limitations on USPTOon USPTO

• As agencies are constrained by finite budgets, when there are As agencies are constrained by finite budgets, when there are several alternatives from which to choose, they should not several alternatives from which to choose, they should not expend public resources filling needs which have already been expend public resources filling needs which have already been met by others in the public or private sector.met by others in the public or private sector.

• Ensure that decisions to improve existing information systems or Ensure that decisions to improve existing information systems or develop new information systems are initiated only when no develop new information systems are initiated only when no alternative private sector or governmental source can efficiently alternative private sector or governmental source can efficiently meet the needmeet the need

• Ensure that improvements to existing information systems and Ensure that improvements to existing information systems and the development of planned information systems do not the development of planned information systems do not unnecessarily duplicate IT capabilities within the same agency, unnecessarily duplicate IT capabilities within the same agency, from other agencies, or from the private sectorfrom other agencies, or from the private sector

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Other USPTO concernsOther USPTO concerns

• Wide-open search engine for any user may overwhelm search Wide-open search engine for any user may overwhelm search capability of the Officecapability of the Office• Pilot via Community nominee(s)

• Should search be reviewed at some nominal level by the Office

• Should search request expire, particularly if user does not submit prior art under rule 1.99

• Type of result output maybe limited by Office resources• Xml listings of results with links to documents from uspto.gov search

pages less resource intensive

• Wrapped pdf files of results more resource intensive

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Questions/SuggestionsQuestions/Suggestions

• Technical issues: • Legal issues:

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Contact InformationContact Information

Rob Clarke

Office of Patent Legal Administration

e-mail: [email protected]

Phone: 571 272 7735

mailto:[email protected]

Documents

Community Patent Robert Clarke – Deputy Director Office of Patent Legal Administration