Action:
Pursue through bilateral and/or multilateral agreements with other Intellectual
Property (IP) Offices to share search results. The results should be analyzed
within a set period of time after implementation. If the results are positive,
the Office should then begin to explore the feasibility of mutual exploitation
of the search results from other IP Offices with whom we have bilateral
and/or multilateral agreements.
Background Information:
· The
mutual exploitation of search results program is based on the reliance
of work performed by another IP Office to the maximum extent practicable
so
as to reduce duplication of efforts and to decrease workload.
· These
bilateral and/or multilateral agreements would be done in parallel with
other initiatives such as substantive patent law harmonization, and Patent
Cooperation
Treaty (PCT) reform discussions within the World Intellectual Property
Organization (WIPO).
· The
mutual exploitation program is part of an overall strategic program to
promote global patent protection.
· Issues
of timely delivery and high quality of the shared work product are to be
considered.
Option Considered:
· Exploit
the work product of other IP Offices in a stepwise approach by first sharing
the prior art discovered by the Office of first filing.
USPTO Recommended Course of Action:
· The
Office should move forward with procedures to share the search results
of other IP Offices.
· After
a review of the first step of shared search results, review of other work
sharing options should be considered.
Timing:
· Agreement
with the Japan Patent Office (JPO) to implement a pilot program by January
2003 to test the extent to which the use of prior art results from the JPO
will help reduce duplication of efforts, improve quality and decrease workload. The
results of the pilot program will be evaluated in May 2003 (see also proof
of concept below).
· Agreement
with the European
Patent Office (EPO) to implement a pilot program by end of 2002. The results
of the pilot program will be evaluated in 2003 (see also proof of concept
below).
Risks:
· Timing
issues in terms of delivery of useable search/examination results for mutual
exploitation.
· Perceived
patent quality issues.
Return on Investment:
Estimated investment - continue/expand negotiations/discussions.
Estimated benefits - maximize leveraging of work product from other countries/offices
in up to 45 percent of applications filed per year.
Details:
The
procedures set forth below are to implement a mutual exploitation of
search results program. The timing of search performed by the first IP Office
is critical under this program. If the USPTO is going to be the Office
of the second filing, when the U.S. examiner picks up the U.S. application
for examination, the search results of the first IP Office must be available
to the U.S. examiner. In order to ensure that the timing factor is met
and that foreign applicants are not being favored, the exploitation
of search results program should be based on a bilateral agreement between
IP Offices on a reciprocal basis. Request to participate in the search
results program must be initiated by applicant.
For
purposes of the most-favored-nation treatment, the program should not
be limited to the nationals of the two IP Offices with the bilateral agreement. Any
foreign nationals who want to participate in the program may do so by filing
the appropriate corresponding applications in the two IP Offices with the
bilateral agreement. For example, if there is such a bilateral agreement
between the USPTO and JPO and a German national wants to participate
in the search exploitation program, the German national may do so by
filing
an application in the JPO and a corresponding application in the USPTO
and request that the USPTO use the search results of the JPO.
In order to participate in the program, an IP Office must:
· Meet
the minimum requirements of an International Searching Authority (ISA)
as set forth in PCT Rule 36;
· Have
in its possession, or have access to, at least the minimum documentation
as set forth in PCT Rule 34;
· Adhere
to enhanced PCT search and examination guidelines;
· Be
able to exchange results in electronic form; and
· Be
able to meet other criteria such as quality, timing, language, and same
claimed subject matter as noted below.
The exploitation of search results program focuses on the prior art results
found by another IP Office. Patentability determinations must be made by
each IP Office based on its own patent law. Issues such as subject matter
eligibility should be addressed based on the patent law of each respective
IP Office.
In order to most effectively use the search results performed by another
IP Office, the claims searched in corresponding applications must be directed
to the same invention. Where an applicant files multiple applications
in the Office of the 1st filing and subsequently files a single application
in the Office of the 2nd filing based on those multiple priority
applications, the Office of the 2nd filing will only use the search
results performed by the Office of the 1st filing on subject matter
which are common between the application filed in the Office of the 2nd filing
and the multiple priority applications.
Quality Assurances: Recognizing that each IP Office may use different tools
to perform a search, and may search different databases for non-patent literature,
each IP Office needs to implement an independent quality assurance mechanism
to evaluate the field of search and search logics performed by the IP Office
of the first filing. Sharing of these results may make the exchange of
the search results more effective.
The procedures noted below could apply to any IP Offices with a bilateral
agreement with the USPTO. For illustration purposes, we will assume
that there is a bilateral agreement between the USPTO and the JPO and
applicant
filed an application (a national application or a PCT application) in
the JPO and a corresponding application in the USPTO.
Part I:
Application of the exploitation of search results program
under the current U.S. system with no reduction in fees.
· Applicant
must have requested expedited examination in the JPO if a national application
was filed in the JPO.
· Applicant
files a corresponding application in the USPTO with an appropriate petition
requesting participation in the search exploitation program.
If applicant
submits to the USPTO a copy of the claims in the JP application with a
copy of a first action on the merits (decision not favorable to patentability)
from the JPO along with copies of the prior art documents cited by the
JPO, or a copy of the claims in a PCT application with an international
search report (ISR) under PCT Chapter I along with copies of the prior
art documents cited in the ISR (English translation of all the non-English
language documents should preferably be submitted by applicant or maybe
obtained from the JPO):
§ U.S. examiner will use the work
performed by the JPO to a maximum extent practicable.
§ U.S. examiner will check the accuracy of
the field of search, and search queries made by the JPO and update the
search, where appropriate, for 35 U.S.C. § 102(e) prior art and other
areas of non-patent literature.
§ If the claims in the U.S. application
are different than the claims in the application filed in the JPO, there
will
be less benefit given by the U.S. examiner to the work performed by the
JPO.
Part II:
Application
of the search results program under the multi-track examination process. The
USPTO will seek legislation to provide for separate filing, search and
examination fees, payable in a lump sum at the time of filing. The USPTO
will consider refunding portions of the search fee if search results
from an IP Office with whom we have a bilateral or multilateral agreement
are
provided.
· Applicant
must have requested expedited examination in the JPO if a national application
was filed in the JPO.
· Applicant
files a corresponding application in the USPTO requesting participation
in the search exploitation program.
Applicant
submits to the USPTO a copy of the claims in the JP application with
a copy of a first action on the merits (decision not favorable to patentability)
from the JPO along with copies of the prior art documents cited by
the
JPO or a copy of the claims in a PCT application with an international
search report (ISR) under PCT Chapter I (English translation of all
the non-English language documents should preferably be submitted by applicant
or maybe obtained from the JPO).
§ U.S. examiner will use the work
performed by the JPO to a maximum extent practicable.
§ U.S. examiner will check the accuracy of
the field of search, and search queries made by the JPO and update the
search, where appropriate, for 35 U.S.C. § 102(e) prior art and other
areas of non-patent literature.
§ If the claims in the U.S. application
are different than the claims in the application filed in the JPO, there
will
be less benefit given by the U.S. examiner to the work performed by the
JPO.
Proof of Concept:
USPTO and JPO agreed in November 2002 to take a step-by-step approach. Both
Offices agreed to commence a pilot program in January 2003 to exchange search
results. Where the JPO is the Office of 1st filing,
JPO will provide the USPTO with (1) an English translation of the first
Office action, (2) any non-patent literature prior art with pertinent sections
highlighted,
(3) an identification of the field of search and search strategies, and
(4) copy of claims examined in the Office action. Where the USPTO is the
Office of 1st filing,
USPTO will provide the JPO with (1) a copy of the Office action in the English
language, (2) any non-patent literature prior art with pertinent sections
highlighted, (3) an identification of the field of search and search strategies,
and (4) copy of claims examined in the Office action.
The results of the pilot program will be evaluated in May 2003 to determine
whether any revisions need to be made.
USPTO also reached an agreement with the EPO in November 2002 to take
a step-by-step approach by commencing a pilot program
in February 2003 to exchange
search results. The scope of the project is limited to applications which
have been first filed in the EPO and a subsequent application is thereafter
filed in the USPTO and vice versa. The first phase of the pilot program is limited
to published applications. Where the USPTO is the Office of 1st filing,
USPTO will provide the EPO,
in electronic form, copies of the first office action on the merits
along with the citation of references forms. Where the EPO is the Office
of 1st filing, USPTO will access the
EPO search reports via the EPO’s PHOENIX File Inspection system. Each
Office agreed to provide the other Office with a list of no more than
500 applications in all fields of technology for use in the pilot program.
The results of the pilot program will be evaluated in 2003 to determine
whether any revisions need to be made and to consider extending the scope
of the exchange to include EP applications claiming priority to France, the
Netherlands, and Belgium.
The USPTO will notify the public of the first phase of the search
exchange programs by means of a publication.
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