Forty-two Patent Practitioners write to Director Vidal about PCT

(Update:  we now have a phone call scheduled with the acting director of IPLA.  Read about it here.)

(Update:  Director Vidal has responded to acknowledge receiving the letter.  See blog posting.)

Forty-two Patent Practitioners have written to Director Kathi Vidal in a letter dated April 26, 2022, asking her to help the USPTO get closer to providing world-class service to the PCT applicant community.  You can see the signed letter here.  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).

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