ISA/US work product gets you on the Highway in the USPTO?

Carl Oppedahl in this 2011 Youtube video

This email came in today from someone (let’s call him “PY”) asking about PCT-PPH:

I watched your 2011 Youtube video on this subject and found it very useful. Thank you for sharing your expertise.
I have a question: If the favorable written opinion is from the USPTO in the PCT international phase, can you still use the PCT-PPH in a patent application pending in the USPTO?

PY’s question is actually a very smart question.  First I will explain why this is a very smart question, and then I will offer a practical answer to the question.

As a reminder, the general point of the Patent Prosecution Highway is that a second patent office (a so-called “Office of Second Examination” or “OSE”) will agree to take a case out of turn because of previous work done by a first patent office (a so-called “Office of First Examination” or “OFE”).  One variant of PPH assumes that the OSE is an International Searching Authority (or International Preliminary Examining Authority) carrying out its work during the international phase of a PCT application.

The various PPH source documents all say that the OFE and OSE are required to be non-identical patent offices.

Which then brings us to PY’s question.  PY imagines a case where the patent application which might be gotten onto the Highway is pending in the USPTO.  In other words, PY imagines that the OSE is the USPTO.  Keep in mind that such an application is not required to be the national phase of the PCT application that we are talking about.  The US patent application might be a bypass continuation.  The US application might be the priority application that predates the PCT application.  Or, yes, the US application might be the US national phase of the PCT application.  But in any of these fact patterns, the patent application is pending before the USPTO.  It is an application in which the patent examiner whose job it is to figure out whether or not to grant a patent is a patent examiner on the payroll of the USPTO.

If the OFE were some non-US patent office (say, the EPO, or the Korean or Japanese or Chinese patent office) then the fact pattern would fit squarely within the original paradigm of the Patent Prosecution Highway.  Likewise if the work product that is being relied upon were to come from ISA/EP or ISA/KR or ISA/JP or ISA/CN (or IPEA/EP or IPEA/KR or IPEA/JP or IPEA/CN) then it would be easy to see how this fits within the paradigm of the PCT-PPH.

And indeed these various fact patterns are the very fact patterns that I was referring to in the Youtube video.

But PY imagines a different fact pattern.  He imagines the case where the PCT applicant did not select ISA/EP or ISA/KR or ISA/JP or ISA/CN.  He imagines the case where the PCT applicant selected ISA/US.  (Or, in a variant, PH imagines the case where a Demand was filed and the PCT applicant selected IPEA/US.)  The idea here is that the work product being relied upon to get a US patent application onto the Highway is work product that is (nominally) from the USPTO itself.

This means that (at least nominally) the OSE and the OFE are the same Office, namely the USPTO.  This means that (as PY correctly points out) one must consider whether the Highway would be available at all in this fact pattern.

This is why PY’s question is a smart question.

Part of the practical answer is that if you have a favorable finding from ISA/US, you can use it to get a US case onto the Highway.  It will actually work.  If an applicant files such a PPH request, USPTO will actually grant it.  The case will be marked as “special” in USPTO’s systems and the Examiner will examine the case promptly.  That is the practical answer.

But there are many more things that may be said about this.  There is much more to the practical answer to PY’s question.

One thing is that as some readers know, the ISA/US work is not carried out by Examiners on the payroll of the USPTO.  The ISA/US work is carried out by private contractors (Cardinal Law Group and Landon IP).  This leads to a situation in which it would be surprising if the USPTO Examiners were to feel inclined to give full faith and credit to the work of ISA/US.  (See my blog article about “drinking their own champagne”.)

Another thing is that over the years, I have from time to time heard from ex-employees of these contractors who used to write the ISR/WOs (international search reports and written opinions).  And they described that they were told informally that they should avoid establishing ISR/WOs that said that all claims were patentable.  This would guarantee that such work product could not be employed by a patent applicant for getting case into the Highway.

Still another thing is to remind ourselves of 37 CFR § 1.496, which says:

National stage applications having paid therein the search fee as set forth in § 1.492(b)(1) and examination fee as set forth in § 1.492(c)(1) may be amended subsequent to the date of commencement of national stage processing only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications will be advanced out of turn for examination.

(emphasis added.)  Which then forces us to go look at 37 CFR § 1.492 which says that if the US national stage (national phase) case is one in which ISA/US or IPEA/US has decided that the criteria of novelty, inventive step (non-obviousness), and industrial applicability have been satisfied for all of the claims presented in the application entering the national phase, then the search fee due for US national-phase entry is zero and the examination fee due is zero.

If indeed USPTO did signal to Cardinal and to Landon to avoid establishing favorable ISR/WOs, this loss of fee revenue could be seen as a motivating factor for such signaling.  (USPTO people have denied such signaling.)

There are many factors which might influence the selection by a PCT applicant of an International Searching Authority.  Clients of our firm who entrust to us the task of filing a PCT application almost never select ISA/US.  (Most pick ISA/KR and the remainder mostly choose ISA/EP.)

But yes, if you were to pick ISA/US for your PCT application, and if you were to receive a favorable ISR/WO, then you could enter the US national phase and you could get three benefits:

  1. you could get the case onto the Patent Prosecution Highway, which makes the case “special”;  and
  2. you could get the zero fees for search and examination as defined in Rule 492;  and
  3. you could get the case “advanced out of turn” for examination as defined in Rule 496.

Note that 1 and 3 are not the same thing.  Benefit 3 only gets you a quick first Office Action, and then only if you pester the Examiner to get it.  (USPTO people admit to me that there is no mechanism within USPTO to actually deliver on the “out of turn” promise of Rule 496.)  Benefit 1 is a “gift that keeps on giving”, in the sense that the “special” status persists through RCEs and through appeal, if any.

Note that benefit 1 is available for any US patent application (not merely a national phase from the PCT application).  In contrast, benefits 2 and 3 are available only for a case that is a US national phase from the PCT application.

But I wish the reader good luck in obtaining benefits 2 and 3.  My impression is that these days it happens only rarely, if ever, that ISA/US gives a fully favorable ISR/WO.

The other way that one might hope to get some or all of these three benefits is by filing a Demand, thereby purchasing the services of an International Preliminary Examining Authority.  There are many factors that might influence an applicant’s choice of IPEA.  One factor is timeliness.  It turns out that IPEA/US routinely fails to get its work done until long after the 30 months has come and gone.  It often takes 40 months and there are anecdotal reports of 50 or more months.  In other words, the IPEA/US work product usually arrives far too late to be of any help to an applicant in picking where to  enter the national phase.  And usually arrives far too late to be of any help in getting the zero fees set forth in Rule 492.  And, given that the first Office Action in the US case might well arrive prior to the arrival of the work product of the IPEA/US, the prospect of getting the case “advanced out of turn” as set forth in Rule 496 might ring hollow.  The same could be said for the prospect of using IPEA/US work product to get into the Highway.

Have you received an ISR/WO in recent years that was so favorable that you chose to use it to get onto the Highway in the USPTO?  (I say “in recent years” because many years ago the ISA/US work was actually carried out by USPTO Examiners.)  Did you use this favorable result to get the zero fees under Rule 492?  Please post a comment below.

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