(There is a followup posting.)
Let’s say you filed a PCT application and picked the USPTO to be your International Searching Authority. Suppose further that ISA/US decided the claims are patentable. When you enter the US national phase from that PCT application, may you safely assume that the USPTO will allow the application?
The answer to this question is, of course, “no, not at all”.
Yet if you take the question presented and replace “USPTO” with “EPO” throughout, the answer to that question is “yes, of course”.
Why are these answers so very different? Why does the EPO “drink its own Champagne” while the USPTO does not?
Part of the problem is that the ISA/US work is carried out by any of three private contractors. When you enter the US national phase, the USPTO Examiner is not particularly likely to assume that the claims are patentable just because the employee of the private contractor said they were patentable. In the EPO, on the other hand, generally the same Examiner carries out both tasks. So it is not such a surprise that the Examiner handling the national-phase case will indeed generally assume the claims to be patentable if (as is nearly always the case) it is that same Examiner who did the ISA/EP work, and if the applicant is so fortunate as to have that Examiner decidethat the claims were patentable when serving in the ISA/EP.
Today the AIPLA sent a letter to the USPTO urging the USPTO to give substantial deference in the US national phase to the work of ISA/US (and IPEA/US) in the international phase.
One hopes that USPTO will choose to move in the directions suggested in this letter.