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

Community Patent Robert Clarke – Deputy Director Office of Patent Legal Administration Robert.clarke@uspto.gov. Public Interest in Community Patent. Leverage private sector knowledge base to provide prior art to the Office before patents are granted

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

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  1. Community Patent Robert Clarke – Deputy Director Office of Patent Legal Administration Robert.clarke@uspto.gov

  2. Public 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

  3. Currently Available USPTO procedure 37 CFR 1.99 – See MPEP 1134.01 • Permits third parties to submit prior art after publication of an application • Limitations: • Content • Timing • Participation

  4. Rule 1.99 Limitations • Content • Only patents and publications may be submitted • No discussion or highlighting of documents permitted • No more than 10 documents per submission

  5. Rule 1.99 Limitations • Timing • Within two months of publication of the application; and • No later than mailing of notice of allowance • NOTE: inherent delays in examination due to backlogs often make this limitation irrelevant.

  6. Rule 1.99 Limitations • Participation • The Office will not communicate with the third party submitter of a rule 1.99 submission except to: • Mail a return post card, if any; and • Process the fee for the submission.

  7. Rule 1.99 Limitations • Formality Review by the Office • Staff other than the examiner of record review 1.99 submissions for compliance with the content and timeliness requirements. • Informal submissions are discarded and are not available to the examiner.

  8. Rule 1.99 Limitations • By statute some applicants may opt out of publication if • applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing. • NOTE: the Office’s 21st Century Strategic Plan included a recommendation that legislation to eliminate this ability be implemented. See http://www.uspto.gov/web/offices/com/strat21/action/lr1hp67.htm

  9. Rule 1.99 Limitations • Statutory reasons for the limitations • 35 USC 122(c) PROTEST AND PRE-ISSUANCE OPPOSITION provides: • The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant. • The Office’s 21st Century Strategic Plan did not recommend a legislative change to remove this requirement.

  10. OMB Circular No. A-130 Limitations on USPTO • As agencies are constrained by finite budgets, when there are several alternatives from which to choose, they should not expend public resources filling needs which have already been met by others in the public or private sector. • Ensure that decisions to improve existing information systems or develop new information systems are initiated only when no alternative private sector or governmental source can efficiently meet the need • Ensure that improvements to existing information systems and the development of planned information systems do not unnecessarily duplicate IT capabilities within the same agency, from other agencies, or from the private sector

  11. Other USPTO concerns • Wide-open search engine for any user may overwhelm search capability 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

  12. Questions/Suggestions • Technical issues: • Legal issues:

  13. Contact Information • Rob Clarke Office of Patent Legal Administration e-mail: robert.clarke@uspto.gov Phone: 571 272 7735

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