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Wednesday Nov 18, 2009

Advancing USPTO's Work Sharing Efforts

 Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Today the USPTO is hosting a roundtable on international work sharing.  This forum will bring together distinguished panelists from interested stakeholder groups to have an open discussion on the issues and implications around work sharing. Work sharing is an important tool for speeding the processing of applications filed in multiple jurisdictions by enabling patent offices to avail themselves of work done by another patent office.
Of course, work sharing does not substitute for decisions on patentability—which are and will continue to be made solely by USPTO examiners as to applications pending in the USPTO.  But work sharing is a powerful tool, like other tools, enabling our employees to extract value from the efforts of other similarly skilled examiners in other patent offices, including prior art found in the course of searching, and office actions applying patentability criteria that are in many cases very similar across patent systems.

The amount of repetitious work involved in examining patent filings first filed in other patent offices represents a significant impact on the USPTO’s workload and the workload of other offices, and contributes to our backlog and long pendency periods.  Thus, I see work sharing as one of our most important tools to speed patent examination and enhance quality. We’re eager for today’s discussion and look forward to hearing the insights and perspectives of the participants. 

Just last week, I attended the Trilateral Conference and Industry Trilateral meetings in Kyoto, Japan, where the USPTO, the EPO, and the JPO entered into a series of bilateral agreements to expand the existing Patent Prosecution Highway (PPH) work share program.  These new PPH agreements between the Trilateral Offices will enable us to use international search reports, written opinions, and international preliminary examination reports developed within the framework of the international Patent Cooperation Treaty (PCT), in examining patent applications filed at the USPTO.

 These new agreements greatly expand the potential of the PPH program.  By permitting a Trilateral Office to draw upon the positive examination result from the PCT work product of another Trilateral Office, the PPH will now be available to a larger number of applicants.  This will make it possible to obtain patent protection in multiple countries more quickly and easily, and less expensively.

 In addition, the Trilateral Offices are developing new information systems and a new generation of information products and services.  For example, we are undertaking efforts to move toward use of a more efficient means of processing data through use of an Extensible Markup Language (XML) data format, and to develop tools to encourage XML filing by applicants.

These are some of our work sharing initiatives both at home through the multilateral fora.  By further expanding our work sharing efforts the USPTO will be better-positioned  to meet the needs of the constantly evolving global intellectual property landscape.

 Please stay tuned as we advance in embracing work sharing, and please do send along your comments.



Director Kappos, Thank you for keeping the promise you gave to inventors @SF Public Library on October 21 and opening this blog. During Q&A @SFPL I asked whether it is possible that in the future USPTO examiners will be allowed to use Skype or any other VoIP software for direct conference calls with inventors from US and overseas. Of course, I understand that this will create privacy & retention of records concerns. However, it will also improve quality and speed of the examination process for applications filed by solo inventors from overseas (especially from developing countries where cost of the international call might affect inventor's decision to contact USPTO examiner directly after receiving the first office action). It will be great to see your opinion in this blog. It might serve as as a starter for a public discussion. All the best, Gennadiy Kornev.

Posted by Gennadiy Kornev on November 18, 2009 at 01:00 PM EST #

Great information here, Director Kappos. With this blog people will get straight information from you. Regards, <a href="">John</a>

Posted by John on December 02, 2009 at 04:43 PM EST #

Director Kappos: I agree that worksharing shows promise to help reduce the backlog. However, there is another category, I will refer to as technical information sharing, that helps examiners to complete their examination tasks more efficiently and effectively and results in higher quality patents. One USPTO program which was in place for many years, but was discontinued last year, was the annual USPTO Tech Fair. This program provided an excellent educational vehicle for the examiners to get up to date information on the latest state of the relevant technollogy from industry leaders for their specific areas of responsibility. It also afforded the participants the opportunity to have an open dialogue with the PTO leadership on the latest state of affairs in the USPTO. I would like to ask you to consider restarting this program based on the value it brought to the Examiner Corp. Also, I know that some technical training was provided by the Patent Academy, but am not sure of the present state of this program. It would be appreciated if you might be able to update us generally on the state of examiner training at the PTO, both substantively and technically, in one of your subsequent postings. Thanks.

Posted by Phil Wadsworth on December 04, 2009 at 09:18 AM EST #

Director Kappos, Automated sharing of work results between patent offices by itself is a good idea. But the PPH and SHARE programs also allow an entity to get faster service in the U.S. (jump to the front of the U.S. queue) by doing foreign filings. Both of these programs seem to unfairly favor large entities, at the expense of small entities who initially don't have the resources to foreign file. What is the justification for allowing an [more often a large] entity to jump to the front of the U.S. queue, just because they have also filed in foreign countries? Thank you for considering my viewpoint.

Posted by inventor-0875 on March 14, 2010 at 10:18 PM EDT #

I am a professional inventor with three patents pending at the USPTO. I recently saw some possible changes to patent law listed on your website. I think its a great idea to help small independent inventors get he representation from Pro Bono Patent lawyers. I applaud that policy change.

Posted by Neil Farbstein on April 03, 2010 at 12:01 PM EDT #

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