Followup to “drinking their own Champagne”

Readers of this blog will recall that the Board of Directors of AIPLA adopted a resolution urging the USPTO to give substantial deference in a US national-phase application to the work done earlier by the USPTO in its role as International Searching Authority and International Preliminary Examining Authority.  AIPLA then wrote a letter to the USPTO about this.  I call this (not AIPLA’s terminology!) inviting the USPTO to “drink its own Champagne”.  I blogged about this.  What happened next?

What happened next?  A couple of weeks went by and two things happened.  One was that a nice USPTO person phoned me up as an exercise in expectations management — I think hoping to minimize how disappointed I would be when USPTO made an official response.  The second thing that happened was the USPTO’s official response.

The official response, reduced to its simplest terms, was “no”.  It mentioned “labor-management relations” as a factor that would get in the way of near-term change in this area.

The problem, of course, so far as the work of the ISA/US is concerned, is that ISA/US work is done by private contractors and not by the Examining Corps of the USPTO.  On a simple human level, it is thus unsurprising that an Examiner in the USPTO examining an application that is a national phase from a PCT would not automatically choose to follow, and indeed might be initially skeptical of, work carried out by an employee of one of the private contractors.  Until such time as the USPTO chooses to bring the ISA/US work back into the Examining Corps, it seems unlikely that applicants will see a meaningful shift in the extent to which an Examiner gives deference to ISA/US work.

The AIPLA resolution urged that steps be taken so that deference be given not only to ISA/US work but also to IPEA/US work.  The excuse that works for ISA/US deference (that two different people with two different employers do the two tasks) is unavailable to the USPTO where IPEA/US work is concerned.  Disappointingly, the USPTO response ignored the IPEA/US part of the AIPLA letter.

The simple fact is that the IPEA/US work is carried out by the USPTO’s Examining Corps.  As such, it ought to be well within the ability of the USPTO to “drink its own Champagne” at least where the PCT work carried out is IPEA/US work.   A simple first step would be for USPTO to do whatever it takes to assign the exact same Examiner to the two tasks (the IPEA/US task and the examining-the-patent-application task).

Posted in PCT |

2 thoughts on “Followup to “drinking their own Champagne”

  1. That’s it, a vague reference to “labor-management relations” as a factor that would get in the way of near-term change in this area? Or is there more? Otherwise, the lack of transparency on the part of the USPTO in responding to AIPLA is striking. Never mind, just by by ignoring the IPEA/US issue, the USPTO demonstrates that it believes it is beyond the reach of organizations like AIPLA and their pesky suggestions to improve the process.

    Does anyone know if a count is not a count when it comes to an examiner allowing a U.S. national phase application right away based on a positive ISA/US ISR/WO, i.e., do they only get full credit for a disposal if they re-search, re-examine, and reject?

    Or, could there be something like the SAWS program at work here: perhaps internal guidance that any positive ISA/US ISR/WO should be given no deference because PTO management believes the quality of such reports sucks?

  2. “Does anyone know if a count is not a count when it comes to an examiner allowing a U.S. national phase application right away based on a positive ISA/US ISR/WO, i.e., do they only get full credit for a disposal if they re-search, re-examine, and reject?”

    A: a count is a count is a count. If we allow a nat’l stage (whether positive or negative ISA/IPRP), we get 2 counts just like any other case (which is a lot of time)= incentive to identify allowable subject matter if we can. Also, if you get a positive IPRP, it behooves you to file PPH expedited examination request.

    “Or, could there be something like the SAWS program at work here: perhaps internal guidance that any positive ISA/US ISR/WO should be given no deference because PTO management believes the quality of such reports sucks?”

    A: Nope. Just that most examiners distrust the ISA/IPRP because they are consistently sub-par.

    hope this helps

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