Urging USPTO to “drink its own Champagne”

(There is a followup posting.)

Let’s say you filed a PCT application and picked the USPTO to be your International Searching Authority.  Suppose further that ISA/US decided the claims are patentable.  When you enter the US national phase from that PCT application, may you safely assume that the USPTO will allow the application?

The answer to this question is, of course, “no, not at all”.

Yet if you take the question presented and replace “USPTO” with “EPO” throughout, the answer to that question is “yes, of course”.

Why are these answers so very different?  Why does the EPO “drink its own Champagne” while the USPTO does not?

Part of the problem is that the ISA/US work is carried out by any of three private contractors.  When you enter the US national phase, the USPTO Examiner is not particularly likely to assume that the claims are patentable just because the employee of the private contractor said they were patentable.  In the EPO, on the other hand, generally the same Examiner carries out both tasks.  So it is not such a surprise that the Examiner handling the national-phase case will indeed generally assume the claims to be patentable if (as is nearly always the case) it is that same Examiner who did the ISA/EP work, and if the applicant is so fortunate as to have that Examiner decidethat the claims were patentable when serving in the ISA/EP.

Today the AIPLA sent a letter to the USPTO urging the USPTO to give substantial deference in the US national phase to the work of ISA/US (and IPEA/US) in the international phase.

One hopes that USPTO will choose to move in the directions suggested in this letter.


10 Replies to “Urging USPTO to “drink its own Champagne””

  1. It used to be the same way in the US – when examiners did the PCT search (back in the day), it was considered easy because for the same search, you got two cases.

    1. Well, it did used to be the same Examiner handling both tasks. And of course there was 37 CFR § 1.496 (which is still in effect) which said that if you enter the US national phase from a PCT in which ISA/US or IPEA/US found the claim to be patentable … you got a reduced search fee and reduced exam fee, and your case would get examined faster. But Rule 496 never said the US national examiner is supposed to give full faith and credit to the ISA/US or IPEA/US work. Nor did any other USPTO document impose such an obligation on the US national examiner.

      Back in those days I did sometimes encounter an Examiner that would give a quick Notice of Allowance on the same case that that same Examiner had said was patentable when that Examiner was writing up the ISR/WO. It was always refreshing when such an Examiner would drink his or her own Champagne.

  2. Going along with this, perhaps a group like the PPAC (ha, ha) could get the PTO to update us on exactly how we are benefiting from PCT search outsourcing. Rather than a PCT-PPH, the path from ISA/US into the US national stage with a positive ISR/WO is more akin to the Oregon Trail.

  3. as an examiner i can tell you exactly why PCT searches do not and should not receive deference: 1) most of the time PCT searches are sub-par at best; and 2) inventive step is not obviousness. more the former.

  4. Another problem, though I’m just one data point. I filed a Demand and amended PCT claims under Article 34 in view of WO. Included a Xmtl Letter w/national phase application explicitly calling attn to that fact and requesting that claims as amended under A34 be those examined. Examiner still issued first OA on claims as originally filed. Then when the Exr examined the A34 claims, he rejected those too. BUT it turned out he had a valid rejection, and the claims of the issued patent ended up being more solid. End result was good, but frustrating when you think ahead, what can get screwed up here, and try to prevent it and it still does anyway.

  5. best way to make sure examiner sees updated claims: file supplemental amend on same day you file original claims (or before examiner sends FAOM/Restriction)

  6. My experience in each of three PCT applications in which I elected ISA/US was rejection in the WOISA which I followed with Demands and responses. In each case, the response to the Demand was written by the US Examiner who essentially parroted the WOISA without evident consideration to the arguments with the Demand. I will not be using ISA/US again.

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