“Welcome to the Table” May 15, 2006 Jay Lucas Deputy Commissioner for Patent Examination Policy

2 The Need for Change The Challenges of the Corps First Course - Appetizers

3 Patent* Applications Filed   FY 05 plan 375,080 (5.5% above FY 04)   FY 05 actual 384,228 (8.1% above FY04)   2.6% over plan Patent* - in this instance refers to only utility, plant and reissue applications

4 First Action Pendency by Art Areas High Pendency Art Areas Pendency 1 (months) Low Pendency Art Areas Pendency 1 (months) 1640 – Immunology, Receptor/ Ligands, Cytokines, Recombinant Hormones, and Molecular Biology – Heterocyclic Compounds and Uses – Analytic Chemistry & Wave Energy – Radiation Imagery – Simulation and Modeling, Emulation of Computer Components – Manufacturing Control Systems and Chemical/ Mechanical/Electrical Control – Interactive Video Distribution – Dynamic Information Storage & Retrieval – Control Circuits – Electrical Connectors – Finance & Banking, Accounting – Land Vehicles – Surgery: Cutting, Clamping, Suturing – Tools & Metal Working “Average 1 st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005.

5 “So Go and Hire Some Examiners” CorpsDesign FY 04 Hires FY 04 Attritions FY 05 BOY Examiner Staff FY 05 Hiring FY 05 Attrits FY 06 Hiring Goal FY 06 hires (1/25/06) FY05 Hires as a Percent of Examiner Staffing in the TC 24%13%40%26%25%22%30%26%

Pendency Reduction Action Plan (8.1% filing growth rate)

Update on Published NPRs Claims and Continuations Jay Lucas

8 Claims-Continuations Update Claims-Continuations Update 1.Notices of proposed rule makings (NPRMs) concerning claims and continuing applications were published on January 3, The comment period for these NPRMs closed on May 3, comments on the claims NPRM received 334 comments on the continuing applications NPRM received

9 What suggestions would you make? What changes would you make to the notice of proposed rule making for the examination of claims? What changes would you make to the notice of proposed rule making for the practice of continuing applications?

10 Initiatives On the Table Initiatives On the Table Second Course – Dinner is Served

11 Many New Policy Initiatives and Potential Projects 1. Accelerated Examination 2. Markush or Other Alternative Language 3. Preexamination Search Report 4. Information Disclosure Statements 5. Notice of Inquiry – Inequitable Conduct 6. Peer to Peer Pilot 7. Deferred Examination

12 The Sweet Things in Life The Sweet Things in Life Third Course – Dessert

13 Sweets and Treats 1. Priority Document Exchange 2. EFS-Web

14 User Accesses USPTO Portal User Accesses USPTO Portal Access EFS-Web As Unregistered Filer Access EFS-Web As Unregistered Filer Authenticate as Registered Filer Authenticate as Registered Filer New Application Design Utility Provisional 371 Existing Application Saved Package Last 20 EFS receipts New Application Design Utility Provisional 371 Pay Fees Via RAM Interface Pay Fees Via RAM Interface Access Filing in Private PAIR (Registered Filer Only) Access Filing in Private PAIR (Registered Filer Only) Receive Acknowledgement Receipt Receive Acknowledgement Receipt Choose Payment Options Choose Payment Options Enter Key Bibliographic Data (New Only) Enter Key Bibliographic Data (New Only) Attach PDF Files Attach PDF Files Upload and Validate Upload and Validate Calculate Fees (Optional) Calculate Fees (Optional) Submit Overview How EFS-Web Works

15 EFS-Web Benefits Requires no changes to your existing patent application authoring process Eliminates charges for Express Mail & couriers Eliminates possibility of losing applications enroute to USPTO Dramatically reduces paper and file storage costs Allows online collaboration among IP professionals who can file applications and papers anywhere, anytime Plays a vital role in strengthening the U.S. IP system

16 EFS-Web Benefits Safe É EFS-Web submissions protect your filing date just like a post card receipt Simple É Even the largest and most complex patent applications can be submitted using PDF files and a few web screens Secure É EFS-Web submissions are protected through Digital Certificates, the most secure method now available

17 EFS-Web Benefits Fast É Patent applications and documents can be submitted and a receipt obtained in minutes Flexible É Requires NO changes to the processes & tools you use to author patent applications and documents Forgiving É Checks documents before submission to ensure compatibility with USPTO standards

18 Contact Information Jay Lucas Deputy Commissioner for Patent Examination Policy Phone: