Please sign this PCT-related letter to the new Director of the USPTO

(The letter has been signed and has been sent to Director Vidal.  You can see it here.)

Hello Colleagues.  Here is a letter that I plan to send to Director Kathi Vidal.  My goal is to send it on Tuesday, April 26, 2022.  What this means is that I hope you will sign the letter between now and the close of business on Monday, April 25, 2022.   Here are the “asks”: 

  1. We ask that the USPTO set policy and internal procedure so that, to the extent possible, the Office arranges for the particular Examiner carrying out work on behalf of the USPTO in its role as International Preliminary Examining Authority in a particular international patent application (PCT application) be the same as the particular Examiner carrying out work on behalf of the USPTO in its handling of the national-stage entry thereof.    (This is setting things up for item 3 below.)
  2. We ask that the USPTO set policy and internal procedure so that, to the extent possible, the Office arranges for the particular Examiner carrying out work on behalf of the USPTO in its role as International Preliminary Examining Authority in a particular international patent application (PCT application) be the same as the particular Examiner carrying out work on behalf of the USPTO in its handling of any US national patent application (111(a) application) claiming domestic benefit from that particular PCT application under 35 USC § 120.  (This is setting things up for item 4 below.  This is basically item 1 but for bypass continuations.)
  3. We ask that USPTO set policy and internal procedure that in an application that is being examined as a national-stage entry from a PCT application, and in which the PCT application was examined by the USPTO in its role as an IPEA, and in which the same Examiner is assigned to both tasks, that to the extent that a claim being examined in the national stage is a claim that is substantially similar to a claim that was examined by the IPEA/US, the Examiner should be expected to arrive at the same answer as to patentability as to that claim within both tasks, barring some satisfactory explanation for arrival at a different answer.  (This is asking the USPTO to “drink its own champagne” for national-phase entries in cases where the applicant picked IPEA/US and where the Examiner found a claim to be patentable.)
  4. We ask that USPTO set policy and internal procedure that in an application that is being examined as a 111(a) application claiming domestic benefit from a PCT application, and in which the PCT application was examined by the USPTO in its role as an IPEA, and in which the same Examiner is assigned to both tasks, that to the extent that a claim being examined in the child application is a claim that is substantially similar to a claim that was examined by the IPEA/US, the Examiner should be expected to arrive at the same answer as to patentability as to that claim within both tasks, barring some satisfactory explanation for arrival at a different answer.  (This is same as 3 but for bypass continuations.)
  5. We ask that USPTO set up an internal procedure so that the “advancement out of turn for examination” provided for in 37 CFR § 1.496 actually take place.
  6. We ask that USPTO provide indicators in the user interface of Patentcenter to acknowledge whether a particular application has been granted “special” status under PCT-PPH and whether a particular application has been recognized as being entitled to “advancement out of turn” pursuant to 37 CFR § 1.496.
  7. We ask that USPTO set up a procedure within DO/EO/US so that the “special” status of a granted PCT-PPH request be honored by DO/EO/US, with prompt national-stage processing of such applications.
  8. We ask that USPTO become a Depositing Office in the WIPO DAS system with respect to international patent applications (PCT applications) that have been filed at the RO/US (the Receiving Office of the USPTO).

To see the full text of the letter, and to see where to sign, please click here.

6 Replies to “Please sign this PCT-related letter to the new Director of the USPTO”

  1. The above seems like too much common sense for the ‘PTO to agree to. But wouldn’t maintaining continuity in the Examiner handling in their IPEA role through National phase/US National application save time/reduce error for the Examiners? Thus financial incentive for the USPTO…
    Only suggestion: #5, “take” should be plural.
    Great suggestions, and I hope they are implemented.

    1. Thank you for commenting, and thank you for signing. You have brought our collective numbers so far up to the following: thirteen signers, who have in the past ten years filed over a thousand patent applications at the USPTO, of which over a hundred were PCT applications filed at the USPTO, and have prosecuted over 2000 US national-phase cases to issuance, and have paid over $13M to the USPTO.

    1. What happened was, a long time ago at the USPTO, everything about PCT was carried out by USPTO employees. By this we mean Receiving Office (RO) functions, International Searching Authority (ISA) functions, International Preliminary Examining Authority (IPEA) functions, Designated Office (DO) functions, and Elected Office (EO) functions. The RO function and DO/EO functions were sort of carried out by people in USPTO’s PCT operations, and the ISA and IPEA functions were carried out by the same Examining Corps that examined domestic (111a) patent applications. There came a point where the outsourcing of many clerk-type functions came into vogue at the USPTO and much of the Application Branch and much of the Issue Branch got sucked into that outsourcing, and with it, much of the RO and DO/EO functions. The main way that the clerk-type outsourcing affects all of us is the miserable backlog of getting Filing Receipts when you enter the US national phase (the 371 processing). That backlog is presently something like 6-8 months but has sometimes been as bad as 18-24 months.

      But back to your question. Back around the time of John Dudas and the high visibility of pendencies in some art units of anywhere up to 108 months or worse, the USPTO management was scrambling around trying to find ways to deal with the embarrassment of having so many unexamined cases. And one fix was to outsource the ISA/US work to the outside contractors. Which I think is the contracting-out that you are asking about. And anyway, that particular contracting-out is still going on to this day (and I consider this to be unfortunate, but I guess it sort of does not matter what I think).

      What I find notable and intriguing is that back when the USPTO management decided to outsource the ISA/US work to the outside contractors, what the USPTO management did not do was also outsource the IPEA/US work. Why did they not also outsource the IPEA/US work? I don’t know for sure, but I can guess. I suspect the reason is that if you count up how many times per year the ISA/US has to establish an ISR/WO, it is whatever it is (something like 20K times per year). In contrast, what you have is that in only 10% of PCT cases does the applicant file a Demand. And in only a small fraction of those cases does the applicant pick IPEA/US. So I would guess the IPEA/US only has to do maybe 300 IPRP/II’s per year. So if you are USPTO management, you pick the low-hanging fruit. You go to the trouble of constructing a first bunch of bidding documents and a first bunch of business process rules and a first bunch of internal procedures, so that you can flush 20K recurring tasks down the toilet (thus freeing up lots of Examining Corp resources for attacking the embarrassing pendency). But if you are USPTO management, it is hard to justify also constructing a second bunch of bidding documents and a second bunch of business process rules and a second bunch of internal procedures, so that you can flush a mere 300 additional recurring tasks down the toilet (thus freeing up only a tiny additional chunk of Examining Corps resources). So this would explain why they kept the IPEA/US in-house and only outsourced the ISA/US.

      And so now in 2022, it is still the case that IPEA/US work is being done in-house. And so it is conceivable to have an “ask” of “make the same Examiner do the IPEA work that does the later ordinary Examining Corps work.”

      Now of course what is unfortunate is that the first four “asks” suffer this same problem. The first four “asks” are basically asking the USPTO management to invest some amount of resources to construct a bunch of business process rules and a bunch of internal procedures, to address something that only happens maybe 300 times a year. The investment per task is non-negligible.

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