As announced in a recent Federal Register Notice, the USPTO is soliciting public comments on its information collection requirements, in accordance with the Paperwork Reduction Act. This is an important opportunity to highlight requirements that are unnecessarily burdensome and that may go beyond requirements authorized by statute. While my main paperwork concerns relate to the IDS rules, the Notice highlights other areas where the USPTO may be underestimating the burdens of its regulations. The USPTO will consider written comments received by May 21, 2012.
The Required Information
The Federal Register Notice encompasses information collected during examination of a U.S. patent application, including Information Disclosure Statements, Requests for an Interview, Amendments and Responses, Disclaimers, Petitions for Extensions of Time, Requests for Continued Examination, Notices of Appeal, Requests for Pre-Appeal Brief Review, Requests for Oral Hearing, and Petitions to Revive. The Federal Register Notice sets forth the estimated time burden associated with each item of information.
Request For Comments
As set forth in the Federal Register Notice, the USPTO invites comments on the following:
- Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility
- The accuracy of the agency’s estimate of the burden (including hours and cost) of the proposed collection of information
- Ways to enhance the quality, utility, and clarity of the information to be collected
- Ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology
The USPTO’s Time Estimates
On the whole, I think the USPTO’s time estimates grossly underestimate the time required to submit the information at issue, particularly where the information is substantive. According to the Federal Register Notice, the USPTO estimates that it will take an average of anywhere from 1 minute, 48 seconds (for a Certificate of Mailing) to 10 hours (for a Declaration under Rule 1.130, 1.131 or 1.132) to comply with its information collection requirements, including the time required “to gather the necessary information, create the documents, and mail the completed request, depending upon the complexity of the situation.”
The USPTO estimates 5 minutes for a Request for a Corrected Filing Receipt. I find it hard to believe that someone could carefully review the filing date, title, inventor information and priority information listed on a filing receipt, determine the source of any discrepancies, and prepare a request in 5 minutes or less.
The USPTO estimates 12 minutes for an Express Abandonment. While it might be possible to prepare the paperwork that quickly, I certainly would take more time gathering the necessary information, such as confirming the Applicant’s intention and explaining the irrevocability of an express abandonment.
The USPTO estimates 12 minutes for a Disclaimer. Again, while it might be possible to prepare the paperwork that quickly, I certainly would take more time gathering the necessary information, such as confirming that a disclaimer is necessary and appropriate and that the Applicant understands its consequences.
The USPTO estimates 1 hour for a Petition to Revive an unintentionally abandoned application. While there might be some cases where the underlying facts can be ascertained and confirmed in under an hour, I would imagine that for most applications it could take at least one hour just to determine how/why the application became abandoned, as required to support the averment that the abandonment was unintentional.
The USPTO estimates 8 hours for an Amendment/Response, 10 hours for a Declaration, and 5 hours for a Request for Pre-Appeal Brief Review. These estimates are not completely out of line, but it is difficult to believe that they are true averages, i.e., that enough Responses take only a few hours to balance the Responses that take many more hours. While I could accept that the average response takes 8 hours or less to write, I would think that the time required to “gather the necessary information”—to review the Office Action, study the cited references, consider response strategies, prepare claim amendments and formulate arguments—will take more than 8 hours on average.
The Unnecessary Burdens Associated With Information Disclosure Statements
I am hopeful that this Paperwork Reduction Act review will force the USPTO to address the unnecessary burdens associated with its Information Disclosure Statement (IDS) rules. As I have written previously, the USPTO’s current IDS rules do not provide an efficient framework for citing information from a co-pending U.S. application that is undergoing parallel examination (McKesson-type IDSs), and require Applicants to submit copies of documents that already are in the USPTO’s possession.
The current IDS rules impose unnecessary burdens on both Applicants and the USPTO. For example, as I wrote previously, in the context of McKesson-type IDSs, the current IDS rules require the same documents to be processed at least three times:
- First, when the USPTO issues the first Office Action and provides copies of non-patent references.
- Second, when the applicant copies the Office Action and references for the IDS in the co-pending application.
- Third, when the USPTO scans/uploads the Office Action and references from the IDS for the electronic file of the co-pending application
There is no legitimate justification for these wasteful and duplicative requirements, particularly where there are straight-forward regulatory fixes that would go far to alleviate these burdens:
- Extend MPEP 2001.06(b) to Co-Pending U.S. Applications
MPEP 2001.06(b) provides that if an application is filed as a CON, DIV or CIP of an earlier application, the examiner will consider the prior art cited in the earlier application without the applicant having to cite to same art in the later application. The USPTO should extend this provision to co-pending U.S. applications that are identified by the applicant. For example, once an Applicant has identified a co-pending U.S. application (such as in an initial IDS), the examiner could periodically check the co-pending application file for new information that may be material to patentability, such as prior to issuing each Office Action or Notice of Allowance. Alternatively, the applications could be linked electronically, such that new information in one application automatically would be added to the electronic file wrapper of the other application.
- Extend 37 CFR 1.97 to Co-Pending Applications
The timing requirements of the current IDS rules include several exceptions for information first cited in a counterpart foreign application. The USPTO should extend these provisions to co-pending U.S. patent applications. There is no reason the USPTO should make it more difficult for applicants to obtain consideration of information originating from a co-pending U.S. application as compared to a foreign application.
- Extend 37 CFR 1.98 to Co-Pending U.S. Applications
The documentation requirements of the current IDS rules require applicants to submit copies of all references (other than U.S. patent documents) unless the references already were cited in an earlier U.S. parent application. The USPTO should extend this exception to references that already were cited in co-pending U.S. applications. An examiner can access information of record in the co-pending application electronically, and nearly as easily as information of record in the application at hand. Alternatively, the applications could be linked electronically, such that new information in one application automatically would be added to the electronic file wrapper of the other application. Thus, there is no justification for imposing this burden on applicants. Indeed, this rule stems from the days of paper patent files, and now is obsolete in view of the USPTO’s electronic file system.
The USPTO should use the new Common Citation Document Application (CCD) tool to reduce the burdens associated with submitting copies of documents cited in co-pending EPO or JPO applications. As I wrote previously, the CCD tool “enables patent examiners as well as innovators to search for and view, in a single screen, the prior art cited by the [EPO, JPO and USPTO] patent offices for the family members of a patent application.” Now that this tool is available the USPTO should tweak these IDS rules:
- Extend MPEP 2001.06(b) to Foreign Applications encompassed by the CCD
As noted above, MPEP 2001.06(b) provides that if an application is filed as a CON, DIV or CIP of an earlier application, the examiner will consider the prior art cited in the earlier application without the applicant having to cite to same art in the later application. The USPTO should extend this provision to related foreign applications encompassed by the CCD (e.g., at least corresponding EPO and JPO applications), such that the examiner would use the CCD tool to determine if any potentially relevant references are cited in co-pending EPO or JPO applications. Alternatively, the applications could be linked electronically, such that new information in a EPO or JPO CCD application automatically would be added to the electronic file wrapper of the U.S. application.
- Extend 37 CFR 1.98 to References available on the CCD
As noted above, the documentation requirements of the current IDS rules require applicants to submit copies of all references other than U.S. patent documents unless the references already were cited in an earlier U.S. parent application. The USPTO should extend this exception to include references available on the CCD.
The USPTO also should take advantage of free patent databases and should not require Applicants to submit copies of documents that it has ready access to, such as published PCT applications and other foreign patent documents that are freely available on-line. Now that that WIPO maintains a database with over 10.5 million patent documents including over 2 million published PCT applications, the USPTO should tweak this IDS rule:
- Extend 37 CFR 1.98 to Freely Available PCT and Foreign Patent Documents
In addition to expanding the exception in 37 CFR 1.98 to include references available on the CCD, the USPTO should extend the exception to include freely available PCT and foreign patent documents, such as those freely available through the WIPO Patentscope website.
A Window Of Opportunity
I have been writing about the unnecessary burdens associated with complying with the IDS rules since I first started this blog. While I understand that the USPTO has other important work to do, I hope that they take this Paperwork Reduction Act review seriously. What could fall more squarely under unnecessary paperwork burdens than rules that require Applicants to submit to the USPTO documents already in its possession and documents freely available to the USPTO with a few keystrokes or via processes that could be automated?