8 January 2024

Gifts From The USPTO For Prospective Patentees Heading Into The New Year

Stites & Harbison PLLC


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Irrespective of the Naughty and Nice List, the United States Patent and Trademark Office ("USPTO") has rolled out a series of programs over the course of 2023...
United States Intellectual Property
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Irrespective of the Naughty and Nice List, the United States Patent and Trademark Office ("USPTO") has rolled out a series of programs over the course of 2023 that may serve to make the spirits of the inventors in your lives merrier and brighter heading into the new year. For prospective patent applicants, the USPTO offers the gifts of preliminary review and expedited examination by way of three separate pilot programs.

1. Pre-Prosecution Pilot Program: On December 21, 2023, the USPTO announced a new pre-application review program designed to assist first-time, prospective inventors unfamiliar with the patent process. According to the USPTO, participants in the program will receive an introduction to patent application basics, publicly available prior art searching tools, an overview of programs available to first-time filers, and direct assistance from USPTO patent examiners with respect to assessing the novelty of a proposed invention and common mistakes in patent preparation and prosecution. To kick off the program, the USPTO will be hosting a two-day, virtual workshop on February 27 and 28, 2024.

While this program will likely provide a better understanding of the patent examination process, prospective patent applicants will still likely wish to consult with and retain the services of an experienced registered patent attorney to avoid critical drafting pitfalls and unnecessarily limiting the potential scope of protection available for their invention.

2. First-Time Filer Expedited Examination Pilot Program: After filing a patent application with the USPTO, the application is assigned to a particular technology unit and to an individual examiner within that technology unit. Depending on the technology unit and the examiner's backlog, in some instances, it can take years for the examiner to review an applicant's application and provide their initial findings regarding the patentability of the invention reflected within the application. Commonly, the initial response (or "Office Action") from the examiner effectively kicks off a back and forth rejection-response process between the applicant and the examiner that continues until either the patent application is found to be patentable or the applicant elects to abandon the application. Under this pilot program, qualifying applicants will receive the first Office Action for their patent application faster than they otherwise would if the application were placed in the normal examination queue.

To qualify for this program, applicants must certify: (1) that the inventor or joint inventors of the patent application have not been named as an inventor in any other nonprovisional application; (2) the applicant and each inventor qualify as a micro entity under a gross income basis; and (3) each inventor is reasonably trained on the basics of the USPTO's patent application process. The program is also only open to non-continuing nonprovisional applications which do not claim priority to a prior-filed nonprovisional or international application. Currently, this pilot program is set to be available to qualifying first-time patent applicants until March 11, 2024 or until 1,000 patent applications have qualified and been granted special status under the program, whichever occurs earlier. As of December 19, 2023, only 106 patent applications have been granted special status under the program.

3. Semiconductor Technology Pilot Program: In support of the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022, the USPTO has also implemented a pilot program to expedite prosecution of patent applications relating to processes or apparatuses for manufacturing semiconductor devices. As with the First-Time Filer Expedited Examination Pilot Program, qualifying applicants for this pilot program will have their patent applications examined and receive a first Office Action more quickly than they otherwise would if placed in the normal examination queue.

To qualify for this program, an applicant's patent application must contain at least one claim that covers either a process or an apparatus for manufacturing a semiconductor device that corresponds to one or more of the technical concepts within H10 or H01L of the Cooperative Patent Classification (CPC) system. The patent applicant must also certify: (1) that the applicant believes the invention claimed within the application satisfies the requirements of the program; (2) the process or apparatus disclosed within the application is primarily focused on manufacturing semiconductor devices; (3) that the applicant believes expediting examination of their patent application will have a positive impact on the semiconductor manufacturing industry; and (4) the inventor(s) has not been named on more than four other nonprovisional applications for which participation under the pilot program has been requested. Like the First-Time Filer Expedited Examination Pilot Program, this pilot program is limited to non-continuing nonprovisional applications.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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