(Update: Forty-two Patent Practitioners have written to Director Vidal about this. See blog article.)
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).