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Monday Jan 31, 2011

The Patent Cooperation Treaty and the USPTO

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

We were recently honored to have EPO President Benoît Battistelli address the staff of the USPTO.  In his address, President Battistelli mentioned the importance of the PCT and applauded USPTO's efforts to make improvements under the PCT.  As such, I thought I’d take the opportunity to update you on what we’ve been doing with regard to PCT processing here at the USPTO.

The PCT Task Force, created in the fall of 2009 and comprised of individuals from Patent Operations, PCT Legal Administration, PCT Operations and External Affairs, held a public meeting in February 2010 to hear comments on how the USPTO could improve its performance as a Receiving Office (RO), an International Searching Authority (ISA), an International Preliminary Examining Authority (IPEA) and as a national Office.  The feedback we  received indicated that we needed to improve the timeliness of our processing and the quality of our work products so that  more reliance can be given in national phase applications (35 U.S.C. 371 applications) to the search reports, written opinions and international preliminary examination reports prepared by the USPTO.

The Task Force has indeed focused on addressing the input we received from the IP community: improving timeliness of processing and quality of work products to maximize re-use potential.  I’m extremely happy with the progress so far and am pleased to report on some of our achievements.  In fiscal year 2010, the U.S. Receiving Office averaged just 13 days for processing new international applications compared to 60 days in FY2008.  As an ISA, we mailed 82% of our search reports and written opinions within 16 months from priority and 91% within 18 months in FY2010.  That is a huge improvement over the 23% and 37%, respectively, from 2008.  Further, the national phase processing division of PCT Operations improved their pre-exam processing time for 35 U.S.C. 371 applications by 33% in FY2010.  As to quality, we made modifications to PCT outsourcing contracts to improve the quality of our contractor-prepared search reports and written opinions, provided our contractors with training on classification, claim interpretation, and search strategy, and are now making a detailed search history of record in international applications along with the search report and written opinion.

Although these improvements are significant, we still have work to do.  To start, we will continue to work with our contractors to improve the quality of the international searches and written opinions.  Also, since the timeliness of our international preliminary examination reports under Chapter II of the PCT is not satisfactory, we are in the process of remapping our entire Chapter II process to find areas where we can make improvements.  We are also further automating a number of processes, including the retrieval of PCT documents from the International Bureau for construction of 35 U.S.C. 371 applications and the transmittal of search copies of international applications to foreign International Searching Authorities.

We will also continue partnering with other IP Offices.  Within the Trilateral context, we are doing a study on ISR re-use in national phase applications and will be working closely with the EPO and JPO to develop metrics to understand the extent of re-use and ways to enhance re-use potential in the future.  Additionally, the USPTO, EPO and KIPO have recently concluded a Collaborative International Search and Examination pilot in which examiners from our Offices worked together to produce international  search reports and written opinions.  This pilot tested the feasibility of collaborative international searches and provided a general assessment of quality. A second larger phase of this pilot is planned for 2011 to build upon the lessons learned from the first phase and to provide a quantitative assessment of collaborative international search and examination.

So, my thanks for the great job done by our USPTO PCT Task Force.  We’ve made really fine progress to date thanks to your diligent, thoughtful work.  And I look forward to announcing more PCT achievements in 2011.


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