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

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 Permits third parties to submit prior art after publication of an application Permits third parties to submit prior art after publication of an application Limitations: Limitations: Content Content Timing Timing Participation Participation

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

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

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

7 Rule 1.99 Limitations Formality Review by the Office Formality Review by the Office Staff other than the examiner of record review 1.99 submissions for compliance with the content and timeliness requirements. 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. 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 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. 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 21 st Century Strategic Plan included a recommendation that legislation to eliminate this ability be implemented. See NOTE: the Office’s 21 st Century Strategic Plan included a recommendation that legislation to eliminate this ability be implemented. See

9 Rule 1.99 Limitations Statutory reasons for the limitations Statutory reasons for the limitations 35 USC 122(c) PROTEST AND PRE-ISSUANCE OPPOSITION provides: 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 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 21 st Century Strategic Plan did not recommend a legislative change to remove this requirement. The Office’s 21 st 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.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 needEnsure 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 sectorEnsure 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 OfficeWide-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 Phone: