(Update: Forty-two Patent Practitioners have written to Director Vidal about this. See blog article.)
If your path for getting a US patent from a PCT application is entry into the US national phase, keep in mind that the Patent Prosecution Highway is a joke these days.The Patent Prosecution Highway is supposed to leverage work product of an Office of First Examination so that an Office of Second Examination can benefit from the work that has already been done. One of the PPH paths is the PCT-PPH path, in which a favorable finding of patentability by an International Searching Authority can be the basis for PPH status when the applicant enters the national phase.
We have a case just now that reminds me how poorly the USPTO sometimes handles this.
A Dutch company invented something really clever (at least I think so!). They filed a PCT application. The European Patent Office said it was patentable. This was in an International Search Report and Written Opinion in April of 2018.
As most folks know, the EPO “drinks their own champagne”. If this Dutch company were to enter the European regional phase from that PCT application, what will happen automatically is a grant of a European patent. EPO trusts the work of its own international searching authority to get the right answer as to what is patentable and what is not. (The USPTO does not, by comparison, “drink its own champagne” in this way, which disappoints me.)
The fact that the EPO drinks its own champagne is not lost on the the examiners and other decisionmakers around the world. A favorable finding of patentability from the ISA/EP, although not binding upon any other patent office, will surely be of at least some help to any other patent office as it goes through its own decision process as to whether or not to grant a patent.
Which is the whole point of the Patent Prosecution Highway. It is why a patent office that participates in PPH (see the diagram above which lists all such Offices) makes it possible for an applicant to get its application put to the front of the line, to get examined right away, if the application is the subject of a granted PPH request.
Back to our Dutch company. Our client learned in April of 2018 that EPO considers its invention to be patentable. In June of 2019, the Dutch company’s patent counsel entrusted to our firm the task of entering the US national phase from that PCT application. We perfected the US national-phase entry on June 13, 2019.
It is our habit, whenever we can, to carry out a US national-phase entry in a way that makes the work as easy as is humanly possible for the DO/EO/US office. We file the kind of Application Data Sheet that auto-loads into USPTO’s systems, so that nobody at the USPTO will have to hand-key any data. We e-file everything (nothing is paper-filed or fax-filed). There are no “missing parts”. When the DO/EO person touches the file for the first time, everything is there. We always file an Express Request for immediate national-phase processing. In most cases the foreign counsel will have provided the inventor’s declaration as PCT Declaration Number 4, so it is instantly available to the DO/EO/US person at the time of US national phase entry.
Even though we do all of these things to make it as easy as possible for the DO/EO/US office, we find that we often must wait six months or more just to get a Filing Receipt. For example we have cases where we perfected the entry into the US national phase as long ago as last November 2018 and even now in August of 2019 we do not yet have a Filing Receipt.
But back to our Dutch client with its clever invention. When the Dutch patent firm entrusted the national-phase entry to us, we did what we almost always do, which is that we prepare and file PPH papers at no charge to the client. The ISA/EP had already found the invention to be patentable, so of course we prepared and filed papers asking the USPTO to please put the case on the Patent Prosecution Highway.
Just today (August 29) we received the nice letter from the Office of Patent Petitions, letting us know that our request is granted. As of today, the application has “special” status.
But no matter how “special” the case is, it still does not have a Filing Receipt. And given the present backlog at the DO/EO/US, the case probably will not get a Filing Receipt until maybe May of 2020. Only then will DO/EO/US send the case to the classification contractor, which will take its sweet time deciding how to classify the application. Only after the case has been classified will it get sent to an art unit, maybe in July of 2020.
The problem is that “special” status does not change anything about how DO/EO/US prioritizes its work. And “special” status does not change anything about how the classification contractor prioritizes its work.
There is some comfort to be had, of course, with “special” status even when there are such discouraging backlogs in places like DO/EO/US. For example if this client were to find the need to appeal to the PTAB, the appeal would be treated as “special”. And for example if this client were to find the need to file an RCE, the case would get examined right away in the RCE.
Years ago there was a policy at the USPTO that DO/EO/US would prioritize its work to take into account the “special” status stemming from PPH. But that policy changed some years ago. I wish that the policy could be reinstated.
What is your experience these days getting Filing Receipts in your 371 cases? Please post a comment below.