Does the USPTO give you the same examiner as in the PCT?

(Updated to reflect that Forty-two patent practitioners have asked Director Vidal to make it so.  See blog post and update below.)

A member of the PCT Listserv asks “does USPTO give you the same Examiner in a US national application and in the corresponding PCT application?”  This is a very interesting question and has several sub-questions to it.

For those who have not been exposed very much to the PCT system, I will mention as background that in the international phase of any given PCT application there may be as many as two opportunities to receive the services of a patent office on the question of whether an invention is patentable.  The first of the opportunities comes from the International Searching Authority (ISA) when it establishes the International Search Report and the Written Opinion (ISR/WO).  The second of the opportunities comes from the International Preliminary Examining Authority (IPEA) when it establishes the International Preliminary Report on Patentability under Chapter II of the Treaty (IPRP/II).  This second opportunity only arises if the applicant chooses to file a Demand for Preliminary Examination (Demand).

One of the listserv member’s points is that if a particular patent office is serving as the ISA and/or IPEA for a particular PCT application, that same patent office might already be examining (or might already have examined) a previous national application that corresponds to the PCT application.  In which case the question naturally arises, will that patent office assign the ISA and/or IPEA work to the same Examiner who did the work on the previous national application?

The other point being made by this listserv member is that if a particular patent office is serving as the ISA and/or IPEA for a particular PCT application, that same patent office might later find itself to be examining a national-phase patent application from that PCT application.  In which case the question naturally arises, will that patent office assign to the national-phase application the same Examiner who wrote the WO or the IPRP-II?

In the case of the USPTO an additional possibility is that the applicant who filed a PCT application might later file a so-called “bypass continuation” application in the USPTO.  In which case the same question arises — will the USPTO assign to the bypass continuation the same Examiner who wrote the WO or the IPRP-II?

According to MPEP § 903.08(b)(A), in the USPTO the general answer to all of these questions is supposed to be “yes”.  But for many reasons, and in many commonplace filing scenarios, the answer in the USPTO is not “yes”, as I will now explain after reviewing a bit of history.

Some readers will recall how it was in the old days (before June 8, 1995).  In the old days, the US did not have provisional patent applications.  In those days nearly all US applicants who were planning to use the PCT would file a US (non-provisional) patent application first, and would file the PCT application a year later.  In those old days the only Searching Authorities certified by RO/US were ISA/US and ISA/EP.  That is, for a US applicant who chose to file the PCT application in the USPTO Receiving Office, the only Searching Authorities that the applicant could choose from were the USPTO and the EPO.  EPO was in those days much more expensive and so most US applicants selected the USPTO to be the Searching Authority for the PCT application.

In those days the PCT offered either a 20-month period (for national-phase entry) or a 30-month period, the longer period being available only if the applicant filed a Demand.  For this reason nearly all PCT applicants filed Demands.  Most US applicants, when filing their Demand, picked the USPTO to be the International Preliminary Examining Authority.

In those days it was relatively rare that a US applicant would enter the US national phase, because there was nearly always a US (non-provisional) patent application that had been filed prior to the filing of the PCT application.  For the same reason it was relatively rare that a US applicant would file a bypass continuation.

Nowadays when a US applicant files a PCT application, it is commonplace that no US non-provisional application has been filed prior to the PCT application.  Very often the PCT application will claim priority to an earlier US provisional application, but in some cases the PCT application will be the first patent application to have been filed.  Nowadays it thus happens quite often that a US applicant will enter the US national phase from a PCT application or will file a bypass continuation application from the PCT application.

In the old days nearly all PCT applicants filed a Demand because that was the only way to get the extra ten months (from 20 months to 30 months) for national phase entry.  Then in about 2004, things changed so that it was no longer necessary to file a Demand to get the extra ten months.  (The exceptions being for Luxembourg, Tanzania, and Uganda, where to this day you would have to file a Demand if you want the full 30 months.)  So the filing of Demands dropped to only about ten percent of PCT cases.  In the past few years, the PCT-PPH system has brought about a renewed interest in the filing of Demands, since an applicant who has received a less than completely favorable WO may wish to explore whether a more favorable IPRP-II can be gotten (thus leading to more or better claims being placed on the Patent Prosecution Highway).

With this background in place, we can return to the original questions posed by the listserv member.

Question 1.  Suppose a PCT application claims priority from a US non-provisional patent application.  Suppose further that the applicant selected the USPTO to be the ISA.  Will the USPTO assign the task of writing the ISR/WO to the same Examiner who examined the prior US non-provisional patent application?

It turns out that Question 1 is a trick question.  Patent examiners at the USPTO do not actually write ISR/WOs any more.  USPTO outsources the ISA/US work to two private contractors (Cardinal IP and Landon IP).  So the answer is “no”, the USPTO never assigns the task of writing the ISR/WO to the same Examiner who examined the prior US non-provisional patent application.

Question 2.  Now change the question slightly.  Suppose a PCT application claims priority from a US non-provisional patent application.  Suppose further that the applicant filed a Demand.  Suppose still further that the applicant selected the USPTO to be the IPEA.  Will the USPTO assign the task of writing the IPRP-II to the same Examiner who examined the prior US non-provisional patent application?  To this question the answer is “yes”.

But as mentioned above, it happens less and less often nowadays that a PCT application claims priority from a US non-provisional patent application.  So questions 1 and 2 do not arise as often as they once did.  Instead if there is a US non-provisional application corresponding to a PCT application, more and more often that US non-provisional application comes after the PCT application, not before it.

Question 3.  A PCT application is filed in which the applicant selected the USPTO to be the ISA.  Later the US national phase is entered, or a bypass continuation is filed in the USPTO.  Will the USPTO assign to the later US patent application the same Examiner who wrote the ISR/WO?

This is a trick question just like question 1.  The answer is “no” because US patent Examiners don’t write ISR/WOs these days.  The ISR/WOs are prepared by private contractors.

Question 4.  A PCT application is filed in which the applicant chooses to file a Demand.  The applicant chooses the USPTO to be the IPEA.  Later the US national phase is entered, or a bypass continuation is filed in the USPTO.  Will the USPTO assign to the later US patent application the same Examiner who wrote the IPRP-II?

This is also a trick question but for different reasons.

The superficial answer to this question is “yes”, the USPTO will probably assign to the later US patent application the same Examiner who was assigned the task of writing the IPRP-II.  We know this from MPEP § 903.08(b)(A) as mentioned above.  (Note that this section of the MPEP has been revised so that this no longer happens.  Forty-two Patent Practitioners have written to Director Vidal about this.  See blog article.)

But the work of USPTO as an IPEA (the work of a US patent Examiner writing the IPRP-II) is very slow.  The World Intellectual Property Organization publishes statistics as to the timeliness by the various patent offices around the world in carrying out their various PCT duties.  These statistics appear in a quarterly “Performance Indicators” report, the most recent of which covers the third quarter of 2013.  Here is a graph from that report showing how long it takes USPTO to establish an IPRP-II:

The whole point of an IPRP-II is to help an applicant to make an informed decision whether or not to enter the national phase at 30 months, and if so, in which patent offices around the world.  This means that to serve applicants well, a patent office serving as an IPEA needs to get the IPRP-II established by no later than around 28 months.

As may be seen from this graph, USPTO falls far short of this 28-month due date.  In 2013, by the 28th month, the USPTO had established an IPRP-II in only about one-third of its cases.  By the 60th month, the USPTO had only established an IPRP-II in about 55% of its cases.  The graph ends at 60 months and the reader is left to speculate when, if ever, the USPTO might manage to establish an IPRP-II in the remaining 45% of its cases.

The alert reader will thus ask why any applicant would ever file a Demand and select the USPTO to be the Preliminary Examining Authority?

If the applicant’s reason for doing this were to be able to use the IPRP-II as a guide to deciding whether to enter the national phase at 30 months (and as a guide to deciding in which patent offices to enter the national phase), then that reason doesn’t work.  The IPRP-II from the USPTO is likely to arrive only months or years after those critical (and expensive) decisions have already been made.

The other chief reason why an applicant might do this is to use the IPRP-II as a way to get a patent application onto the Patent Prosecution Highway.  (This only helps if the IPRP-II is more favorable than the previously received WO.)  But again the IPRP-II from the USPTO is likely to arrive only months or years after the national phase has been entered or months or years after the bypass continuation has been filed.  That is no help with getting a patent application examined faster.

So yes, the USPTO will likely assign to a national-phase application, or to a bypass continuation, the same Examiner who has been assigned to write an IPRP-II.  But the IPRP-II is likely to arrive so late from USPTO as to be of little help to the applicant.