Here is an idea for a Pilot that we think both the office and the Patent Bar would accept. We believe a modified provisional application process offers the best alternative to fixing RCE and prolonged prosecution and the backlog. RCE serves a purpose but the RCE backlogs are a symptom of a bigger problem and tinkering with the current process might create more downstream issues.
Premise**: Would searching the provisional application and inventive concepts shorten prosecution by working on claims before the first action on the merits, hence eliminating the need to RCE?
Perhaps a pilot can gather data to find out and could be outlined as follows:
1) Modifying 37 CFR where needed and the provisional application process to permit the Applicant to file the provisional patent application with a Spec, Drawings and NO claims, but include in the file a list of Inventive Concepts that are based upon the Spec and Drawings and an indication of the claim feature most desired.
2) Pay a small fee to have a search performed based on this provisional submission. The examiner in response will search for the listed Inventive Concepts and in addition search for any other concepts disclosed in the Spec and Drawings (but not listed in the Inventive Concepts).
3) Remove access to Provisional Applications via pair and have the new rules expressly state (and require) that the list of Inventive Concepts will not be retained as part of the file wrapper. Applicant can use the secret IDS process as well to have this form removed.
4) Within the year from the filing of the provisional application, the examiner will send out a brief Office Action that includes a short narrative discussing the best Prior Art references with respect to the subject matter disclosed in the Spec and Drawings (akin to the track one forms today). Subsequently, the system would grant access in Pair after action has been performed.
5) Then, ONLY AFTER reviewing the provisional office action and the Prior Art provided, the Applicant will decide the scope/claims to file in a non-provisional application. Applicant could then ask to participate in the first action interview process to further review the claims prior to the first action on the merits. By combining the modified provisional/first action interview programs we would then have both parties engaged in the claims before the first round of prosecution.
6) The statistics on the USPTO site suggest the first action interview process leads to allowance sooner but even in that system there were some cases that led to RCE or prolonged prosecution and many cases were not interviewed prior to prosecution. With the modified provisional and search being performed prior to the first action, then applicant has a better idea as to what is out there and the examiner already has a search to start from. If we solve the need to RCE then we should solve the RCE problem.
It our hope this provisional/first action interview pilot combo would cause the original claims to be tailored towards the patentable subject matter rather than the overly broad features that are common today. Thus, fewer RCE's would/should be filed. Agreement could be reached earlier, narrowed features earlier, cooperation earlier, rather than later with the RCE. Especially, if this was joined to the first action interview process.
Moreover, based on our premise, the existing provisional application already can be filed in Pair, the provisional application has codes in palm, the application contains the drawings, a disclosure and features needed to gain understanding and perform a search, as it should under 35 USC 112. Thus no major implementation issues appear to be needed. Further, based on this suggestion, it appears on the surface that all that would have to be changed is the charge to do the search and the ability to attach the office action by the examiner to the provisional application. Moreover, it seems most advocate interviews here and this process if used as an input to the first action interview process could be a winning combo.
In conclusion, our premise is simple. It is to use what is not being used effectively as a tool in the current system. The tool is the provisional application which is not used effectively today, but with modification could potentially solve several issues with the office and the delays we all face.
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