U.S. Patent and Trademark Office (USPTO) Applicant "Pre-Docketing Notice" Pilot Program
The United States Patent and Trademark Office (USPTO) announced a new pilot program that will send an informational "Pre-Docketing Notice" to patent application in pending utility nonprovisional patent applications. Under this program, a notice will be sent approximately three months before the date when the application is expected to be docketed to an examiner for substantive examination, thus providing greater transparency into application status and examination timing. The notice informs applicant that examination will soon begin, and reminds them to verify (and correct or update if needed) certain application-related information such as inventorship and ownership. In addition, the notice informs applicant of steps they can take to increase the efficiency and effectiveness of examination, such as filing a preliminary amendment, information disclosure statement (IDS), or other paperwork that will clarify issues or avoid foreseeable rejections.
For those applicants who no longer wish to seek patent protection, the notice is intended to serve as a reminder to promptly pursue express abandonment. Applicants who choose the abandonment option may benefit by obtaining a refund of the search fee and any excess claim fees paid in their application if the conditions in 37 CFR 1.138(d) are satisfied. In addition, removing unwanted applications from the examination queue benefits the public by ensuring that the Office does not waste resources on examining an application that is no longer wanted.
No response to the notice is required, and applications will proceed to examination in the normal course if no action is taken.
Under this pilot, the USPTO plans to evaluate how providing applicants with advanced notification of upcoming examination closer to docketing impacts an applicant's decision making, application inventory, and quality and efficiency of examination. For example, preliminary amendments immediately prior to docketing for examination will be evaluated to determine if efficiency of examination is improved.
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Olive Law Group, PLLC is an intellectual property law firm that represents its clients with respect to patent, trademark, copyright, and trade secret matters. We are focused on how intellectual property and technology can be used to help obtain our clients' business objectives.
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