Colloquium on Pendency Reduction

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Colloquium on Pendency Reduction

• Potential for Reform of the PCT
• The Range of Options
• Michael Kirk
• AIPLA

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THE EXAMINING PATENT OFFICES OF THE
WORLD ARE FACING A CRISIS THIS IS NOT JUST
FROM THE EXPLOSION OF PCT INTERNATIONAL
APPLICATION FILINGS, BUT ALSO FROM THE
EXPLOSION OF STRICTLY DOMESTIC PATENT
APPLICATION FILINGS AS WELL
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NUMBER OF PCT INTERNATIONAL APPLICATIONS
1978 -
2000
NUMBER OF INTERNATIONAL
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PCT ISA IAs SENT TO EACH
ISA

• 1999 2000
• EPO 44713 55414
• USA 14640 17386
• JAPAN 6827 8850
• SWEDEN 4380 4040
• AUSTRALIA 1378 1886
• ROK 4 1217
• RUSSIA 526 595
• CHINA 231 573
• AUSTRIA 965 545
• SPAIN 356 440
• TOTAL 74020 90946

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NUMBER OF DEMANDS RECEIVED
1985 - 2000

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PCT I.P.E.A. I.P.E.R.s
REQUESTED

• 1999 2000
• EPO 30801 37427
• USA 14218 16389
• JAPAN 3283 4401
• SWEDEN 3420 3007
• AUSTRALIA 1126 1372
• REP.OF KOREA 4
  346
• RUSSIA 244 342
• CHINA 186 244
• AUSTRIA 302 418
• TOTAL 53284 64243

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• USPTO FEES
• Diverted Rescinded
  Not Available
• 1992 8.1 M
• 1993 12.3 M
• 1994 14.7 M
• 1995 24.7 M
• 1996 28.6 M
• 1997 53.7 M
• 1998 92.0 M
• 1999 72.0 M
  142.0 M
• 2000 3.0 M
  113.0 M
• 2001
  113.0 M
• 2002 (est.)
  60.0 M
• TOTAL
  737.1 M

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THE USPTO ESTIMATED IN ITS CORPORATE PLAN IN
APRIL 2001 THAT EVEN IF RECEIVED ALL OF ITS FEE
REVENUE IN FY 2003 FY 2006, AVERAGE PENDENCY
WILL REACH 38.6 MONTHS IN FY 2006THE USPTO WILL
BE DENIED NEARLY 60 MILLION OF FEE REVENUE IN FY
2002 AND HAS HAD TO DEVELOP ITS FY 2003 BUDGET
WITHOUT POLITICAL LEADERSHIP THAT UNDER SECRETARY
DESIGNATE ROGAN WILL PROVIDE IF THE AVERAGE
PENDENCY REACHES OR EXCEEDS 38.6 M0NTHS, PENDENCY
IN THE SEMICONDUCTOR, TELECOMMUNICATION, AND DATA
PROCESSING FIELDS MAY REACH OR EXCEED FIVE YEARS
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WE CANNOT WAIT FOR THE PCT REFORMS OR
SUBSTANTIVE PATENT LAW HARMONIZATION TO BE
COMPLETED TO ADDRESS THIS CRISIS PATENT SYSTEMS
MAY COLLAPSE UNDER THE WORKLOADWE SHOULD TAKE
ADVANTAGE OF WHAT THE PCT OFFERS US TODAY THE
PROPOSAL THAT WILL BE DESCRIBED IS BASED ON THE
SITUATION IN THE USPTO, BUT IT MAY WELL HAVE
APPLICATION ELSEWHERE.
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WHILE IT IS RECOGNIZED THAT HAVING TWO COMPLETE
SEARCHES FROM DIFFERENT ISAs CAN STRENGTHEN ANY
ULTIMATE PATENT, CAN WE AFFORD THIS LUXURY?AN
ARGUABLY STRONGER PATENT ISSUED YEARS AFTER THE
COMMERCIAL LIFE OF THE PRODUCT IT PROTECTS HAS
VERY LIMITED VALUEIT IS TIME TO BEGIN TO TAKE
ADVANTAGE NOW OF WHAT THE PCT OFFERS TODAY, WHILE
THE LONGER TERM REFORMS AND PATENT LAW
HARMONIZATION ARE BEING STUDIED AND DEVELOPED
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THE PCT PROVIDES MEMBER STATES WITH AN
INTERNATIONAL SEARCH REPORT INTERNATIONAL
PRELIMINARY EXAMINATION
REPORTBUT THESE ARE NOT USED TO THEIR FULLEST
POTENTIAL BY THE USPTO, BOTH THOSE PREPARED BY
THE USPTO AS WELL AS THOSE PREPARED BY OTHER ISAs
AND IPEAs
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IN THE USPTO -IN EXAMINING PCT APPLICATIONS IN
THE NATIONAL STAGE, EXAMINERS TREAT AN ISR
PREPARED BY ANOTHER PCT AUTHORITY THE SAME AS AN
IDS SUBMITTED BY AN APPLICANTEXAMINERS ARE
REQUIRED TO CONSIDER ISRs AND IPERs WHICH THEY
HAVE PREPARED, BUT THEY ARE NOT REQUIRED TO RELY
UPON SUCH WORK
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THE USPTO SHOULD WORK WITH OTHER ISAs TO ENSURE
THE PRODUCTION OF INTERNATIONAL SEARCH REPORTS
THAT COVER THE IDIOSYNCRASIES OF US AND OTHER
NATIONAL LAWS- -FIRST-TO-INVENT/FIRST-TO-FILE -W
HOLE CONTENTS FOR NOVELTY ONLY -GRACE
PERIOD -DIFFERENCES IN TERRITORIALITYTHE GOAL
WOULD BE AN ISR THAT COULD BE USED IN ALL
OFFICES, BUT ESPECIALLY THE USPTO, WITHOUT THE
NEED TO AUGMENT IT
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THE USPTO SHOULD SUBJECT THE ISRs AND IPERs
PREPARED BY US EXAMINERS TO THE SAME QUALITY
CONTROL THAT ALLOWED PATENT APPLICATIONS
RECEIVEIT SHOULD ALSO SUBJECT THE ISRs AND
IPERs FROM OTHER AUTHORITIES TO SIMILAR QUALITY
CONTROL TO DETERMINE WHICH AUTHORITIES PRODUCE
ISRs AND IPERs THAT CAN BE RELIED UPON
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REQUIRE US EXAMINERS TO USE AN ISR PREPARED BY
A US EXAMINER IN LIEU OF A SECOND INDEPENDENT
SEARCHREQUIRE US EXAMINERS TO USE SUCH ISRs
FROM OTHER SEARCH AUTHORITIES WHICH HAVE BEEN
FOUND TO PRODUCE ISRs OF COMPARABLE QUALITY TO
THOSE PRODUCED BY THE USPTO-- -WITH THE
EXCEPTION THAT A SUPPLEMENTAL SEARCH
WOULD BE PERMITTED WHERE AN EXAMINER
KNOWS OF A BETTER REFERENCE
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FOR PCT APPLICATIONS ENTERING THE NATIONAL
STAGE WITH AN IPER PREPARED BY A US EXAMINER-
-WHERE THERE HAS BEEN NO RESPONSE TO THE
IPER, MANDATE THE USE OF THE IPER AS THE
FIRST OFFICE ACTION -WHERE THE APPLICANT
HAS REPLIED TO THE IPER AND/OR HAS
SUBMITTED NEW OR AMENDED CLAIMS, PERMIT
THE EXAMINER TO MAKE A SUPPLEMENTAL SEARCH
(SIMILAR TO A SEARCH FOLLOWING A FIRST
OFFICE ACTION) AND NORMALLY REQUIRE THE
ACTION TO BE A FINAL OFFICE ACTION
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FOR PCT APPLICATIONS ENTERING THE NATIONAL STAGE
WITH AN IPER PREPARED BY ANOTHER IPEA FOUND TO
PRODUCE IPERs COMPARABLE TO THOSE COMING FROM THE
USPTO- -WHERE THERE HAS BEEN NO RESPONSE TO
THE IPER, MANDATE THE USE OF THE IPER AS
THE FIRST OFFICE ACTION -WHERE THE
APPLICANT HAS REPLIED TO THE IPER AND/OR
HAS SUBMITTED NEW OR AMENDED CLAIMS, PERMIT
THE EXAMINER TO MAKE A SUPPLEMENTAL SEARCH
(SIMILAR TO A SEARCH FOLLOWING A FIRST
OFFICE ACTION) AND NORMALLY REQUIRE THE
ACTION TO BE A FINAL OFFICE ACTION
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AMEND THE RULES IMPLEMENTING EX PARTE
REEXAMINATION FOR ANY PATENTS ISSUED THROUGH THE
PROCEDURES OUTLINED ABOVE TO ELIMINATE ANY FEE
FOR A THIRD PARTY REQUESTER (DIRECTORS
INITIATIVE - 35 USC 303 (a)) THE THRESHHOLD
REQUIREMENT THAT ANY REQUEST PRESENT A
SUBSTANTIAL NEW QUESTION OF PATENTABILITY WOULD
BE RELIED UPON TO PROTECT AGAINST ANY POTENTIAL
ABUSE
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THE CHALLENGETHE
FOREGOING PROPOSAL IS INTENDED AS ONE SUGGESTION
TO ENCOURAGE OTHERS TO REFLECT ON THE PENDENCY
CRISIS WE FACEIT IS RECOGNIZED THAT EVERYONE
ATTENDING THE COLLOQUIUM WILL BE ABLE TO POINT
OUT DEFICIENCIES IN THIS PROPOSALTHE CHALLENGE,
HOWEVER, IS TO COME FORWARD WITH PRACTICAL IDEAS
WHICH WILL WORK AND WHICH WILL EFFECTIVELY
ADDRESS THE CRISIS WE FACE
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