Summary
This newsletter introduces Overview of USPTO Tech Fair and Patent Examiner Technical Training Program (PETTP). Tech Fair is a USPTO-sponsored event where companies present their featured technologies to examiners. In one hour, including a question-and-answer session, companies can explain to dozens of examiners in a particular Technology Center (TC) their relevant technology. You can also give a similar presentation under PETTP.
The benefit of participating in Tech Fair and PETTP is, by building a good relationship with the examiners examining your patent applications and by appealing your innovative technology, that the examination of your patent applications in the future would go smoothly be expected. Many of our clients have taken advantage of this opportunity to make the best for their prosecution, so please let us know if you are interested.
Background
Once each year, each Technology Center (TC) at the USPTO holds a Tech Fair event, where applicant companies present their relevant technology to USPTO examiners. At other times during the year, special arrangements can be made under PETTP for a company to make an individual technology presentation to Examiners in a particular TC, or particular art units within a TC.
In the current situation of the Covid-19, where applicants are restricted from personally visiting the USPTO with their attorneys for examiner interviews and explaining the importance of their technologies, we encourage you to consider taking advantage of the Tech Fair and/or PETTP as an opportunity to present your company’s remarkable technology directly to the examiners and to make connections with the examiners who will examine your patent applications covering your technology. In 2021, Xsensus arranged quite a few Tech Fair and PETTP lectures for Japanese companies, and both the examiners and the companies and expressed significant appreciation for this kind of collaboration.
Overview of Tech Fair and PETTP
Generally, each company has approximately one hour (presentation: 30-45 minutes, Q&A: remaining time) to explain its technology to the examiners in English. Before the pandemic of Covid-19, it was possible to bring actual equipment to the USPTO for demonstrations, but now, the sessions are held via videoconference (Microsoft Teams, which is invited by the USPTO). Each time, about 50 or even close to 100 examiners join the sessions. A presentation under PETTP is basically the same, although we need to make a special arrangement with a responsible examiner of the USPTO, separately from Tech Fair, for the presentation to be made on a particular day during the year.
Benefits of the Tech Fair and PETTP
As a direct benefit of the Tech Fair and PETTP presentations, it is expected that the examiners in the TC who examine your patent applications will gain a deeper understanding of your innovative technology, which will facilitate the examination of your patent applications in the future. For example, when having examiner interview in the future, it is expected that the examiners will recognize your technology as “the technology seen at the Tech Fair”.
In addition, the applicant will be able to explain the verification experiment using actual equipment and verification data in an easy-to-understand manner using photos, diagrams, graphs, etc., which would not be sufficiently possible in a normal examiner interviews. At the same time, by appealing the company’s business situation, position in the industry, superiority, and uniqueness, the company itself will be recognized.
In particular, it is very beneficial for the applicant company to have direct acquaintance with the examiners, including the head of the examination division, and examiners who often examine the company’s technology, and to make strong connections, which will be useful in various situations later on. A significant benefit of these personal connections is that Examiners who know us will often contact us informally to collaborate on prosecuting the application efficiently. We have experienced many times Examiners contacting us before the first Office Action, and suggest ways to move the application to allowance. This is an excellent way to manage cost, and reduce the amount of prosecution history estoppel.
Moreover, knowing the Examiners and Supervisors personally has enabled us to handle difficult issues for the company’s entire patent portfolio. For example, in the past, when we had a problem with an unreasonable number of Section 101 rejections, and inconsistent rejections within a client’s patent portfolio, we contacted the Director of the Technology Center in charge that examination division to help us resolve the problems. The Director invited all of the supervisors and policy people in the TC to meet with us and our client, and we collectively identified a process to avoid the Section 101 rejections and inconsistent treatment. As a consequence, the allowance rate for that client increased dramatically and level of collaboration with the Examiners also increased dramatically after the meeting.
Although the Tech Fair and PETTP presentations are a different approach than the normal examiner interviews, the presentations can be a great way to connect deeply with examiners and, as a result, can be a very useful tool in the examination of each of your patent applications.
Details of the Tech Fair and PETTP
[How to apply]
We have established close and trustworthy relationships with the examiners, supervisor examiners, and division heads of the USPTO’s TCs who handle the applications of our clients. Therefore, when a certain TC is planning to hold its next Tech Fair, a few months before the fair, a Supervisor Primary Examiner (SPE) of that TC usually contacts Xsensus to see if there are any suitable clients who would like to participate in the next Tech Fair. In response to such requests, we contact our clients who are focusing on the technology field in which the most applications are filed and arrange for their participation.
If you are unable to attend the Tech Fair that the USPTO has planned, we can contact the TCs at the USPTO to arrange a special presentation opportunity for you under the PETTP program.
To participate in the Tech Fair, you must submit a special form to the USPTO via the attorneys at least one month prior to the date of the Tech Fair, indicating the title of your presentation, an outline (about one paragraph), and the name and affiliation of the presenter, etc. At that time, the speaker, as well as any company member who participates in the Q&A, will be required to sign a Conflict of Interest form (i.e., a consent form) stating that he/she will not refer to the contents of individual pending applications in the presentation, and that the contents of the presentation may be recorded, stored, and made public or used for educational purposes by the examiners of Canada and Mexico.
Our attorneys will contact the USPTO in advance to arrange dates and times. Generally, it is more effective to schedule the session in the morning U.S. time (nighttime Japan time), as this allows many examiners to attend the examination. If you are expecting examiners residing on the West Coast to attend, we will schedule the session between midnight and dawn Japan time, which we understand may be burdensome for our Japanese clients. However, in order to get the most out of the Tech Fair, we recommend that you schedule the presentation at these times.
[Presentation]
We ask companies to prepare presentation materials and present the presentation portion. For other Japanese companies who have participated with us, it appears that the engineers and the IP department work together to prepare the presentation materials. We often review and revise the presentation materials including modification of contents and English wording, so the content is aligned with the USPTO’s expectation, and the presentation is more effective.
The basic contents of the presentation materials include a company overview, product overview, explanation of the hot topics of technology, future issues, and a summary of the presentation, etc. In particular, when explaining the remarkable technology, the examiners are very interested to understand the story of background of why the technology is necessary, the technically difficult issues, and how the company will solve such issues. It is also more effective to explain in depth how other companies are approaching the same technical issues and how your company is superior to them.
Please note that, as agreed in the Conflict of Interest Form, it is prohibited to refer to individual pending patent applications (e.g., to include application numbers in the presentation materials).
[Fees]
There are no fees! The USPTO is very grateful to have companies educate Examiners. Xsensus is very grateful to its clients and believes it is our duty to help our clients develop a strong reputation with the Examiners.
[Q&A]
During the Q&A session, the presenter or another member of the company will orally respond to questions posted by the examiners via the Teams chat function. In such cases, we can provide translation support as needed, such as translating the examiner’s questions into Japanese for the company members, or translating the company members’ Japanese responses into English for the examiner. It is our pleasure to do so.
Conclusion
In this newsletter, we have provided an overview of the Tech Fair and PETTP, and their benefits to you. Although the pandemic of Covid-19 still affects the world, the Tech Fair is now easier to attend from foreign countries than in the past because it can be held via videoconference, and as mentioned above, you can still enjoy the benefits of fostering an examiner’s understanding of technology and strengthening your connections with examiners. We hope that you will take advantage of the Tech Fair for smooth prosecution and building up your patent portfolio in U.S.
If you are interested in participating in Tech Fairs or making special presentations to the USPTO in the future, please contact us . It is our pleasure and duty to help you in any way possible, and this is one process that we believe deserves your serious consideration.
[1] https://www.uspto.gov/patents/initiatives/patent-examiner-technical-training-program
[2] TC 2600 (Communications) is holding their Tech Fair between May 9 to May 20, and TC 1700 (Chemical and Materials) is holding their Tech Fair June 21 and June 22.
