NICHOLAS GODICI

1
NICHOLAS GODICI

• Acting Under Secretaryof Commerce for
  Intellectual Property and Acting Director of the
  United States Patent and Trademark Office
• FICPI/AIPLA Colloquium on Pendency
• November 2001

2
USPTO Workload
3
US Application Growth by Technology
4
Pendency
5
Pendency by Technology
6
PCT Workload by Technology
7
Examining Resources Devoted to PCT Work
8
USPTO PCT Roles

• RO / US for US citizens or residents
• ISA / US for US citizens or residents and
  small number of other countries
• IPEA / US US examines applications for US
  citizens or residents and small number of other
  countries

9
Choices for US citizens and residents
RO/US
ISA/US
ISA/EP
IPEA/US
IPEA/EP
10
US Application Filed Prior to PCT Application
IPER Issued
Search Report Issued
US Application Filed
12
19
30
Approx. 16
0
28
Time in Months
PCT Application Filed
Chapter II Demand Filed
National Stage Filed
11
PCT and 35 USC 111 (a) Applications Filed
Concurrently
Search Report Issued
US Provisional Application Filed
National Stage Filed
28
12
0
16
30
Time in Months
IPER
Both PCT and 35 USC 111(a) Applications Filed
12
US PCT Filings
13
Chapter II Demands
14
USPTO Strategies

• Single search whenever possible
• Reduce unnecessary IPERs where only time is
  needed (20 30 months)

15
USPTO Strategies

• PCT reform
• Merge PCT and national prosecution
• File one application which is processed as both
  an IA and national

16
USPTO Strategies

• Contract out PCT search when national application
  is not being searched

17
Questions

• To what extent should USPTO give greater reliance
  to foreign search reports in national prosecution
  ?
• Should USPTO contract out PCT and national
  searches?

18
Questions

• Should IP offices move towards mutual recognition
  of one anothers work, especially where an office
  has granted a patent or finally refused the
  application?