worksharing robert a. clarke director, office of patent legal administration united states patent...

WorksharingWorksharing

Robert A. ClarkeDirector, Office of Patent Legal AdministrationUnited States Patent and Trademark Office

04/19/23 2

Topics Topics

OverviewOverview Worksharing InitiativesWorksharing Initiatives

Patent Prosecution Highway (PPH) Patent Prosecution Highway (PPH) New RouteNew Route Strategic Handling of Applications for Strategic Handling of Applications for

Rapid Examination (SHARE)Rapid Examination (SHARE) TriWayTriWay PCT PartnershipsPCT Partnerships

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ResourcesResources

Information on these Programs may be found on dedicated web pages accessible from the Patents Main Page http://www.uspto.gov/main/patents.htm

Triway http://www.uspto.gov/web/patents/triwaypilot.html

New Route http://www.uspto.gov/web/patents/pph/newroute_jpo.html

PPH – individual pages for each agreement

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OverviewOverview

Programs in which the Office receives additional information that assists the examiner in determining patentability

Implementation of alternatives to traditional prosecution

About half of all applications in USPTO are filed by non-residents. Foreign residency is a strong indicator of second filings.

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OverviewOverview

Because of JPO’s request for examination system, the percentage of applications where the JPO, as the Office of First Filing (OFF), could provide its search results to the USPTO is less than 10%. 1307 Off. Gaz. Pat. Office 61 (June 13, 2006)

PPH “Provides applicants at JPO with incentive to file a request for examination at an earlier time and to obtain search & examination results early from the JPO”

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OverviewOverview

Office-to-Office Worksharing and related activities are critical to any long-term, viable solution to escalating workloads.

SHARE is designed to reduce or eliminate the timing imbalances that are preventing our offices from leveraging work done by another office to the maximum extent practicable. – Opening Remarks of Jon W. Dudas, Under Secretary of

Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, to the Trilateral Users Conference, November 8, 2007

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OverviewOverview

Need for Sharing Work Based on Information Sharing is Driven by Globalization of IP Distribution & Protection

Work Sharing contributes to efficiency in patent examination.– Presentation of M. Koezuka, Commissioner of

the JPO to the Trilateral Users Conference, November 8, 2007 (Koezuka Presentation)

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Duplication of EffortDuplication of Effort

Presentation of Hiroki Naito, Managing Director, Japanese Intellectual Property Association, Nov. 8, 2007

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Work Sharing Based onWork Sharing Based on Information Sharing Information Sharing

Koezuka Presentation

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Workload DistributionWorkload Distribution

Presentation of Ruud Peters, CEO, Intellectual Property & Standards, Koninklijke Philips Electronic N.V., to Trilateral Conference November 8, 2007

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Workload DistributionWorkload Distribution

Presentation of Ruud Peters, CEO, Intellectual Property & Standards, Koninklijke Philips Electronic N.V., to Trilateral Conference November 8, 2007

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Perceived Industry NeedsPerceived Industry Needs

Patent protection in more countries Predictable patent systems for efficient, timely

issuance of enforceable quality patents at reasonable cost

Uniformity across geographic boundaries – “whether we can sell our products and not where we can sell” Presentation

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USPTO Worksharing InitiativesUSPTO Worksharing Initiatives

Patent Prosecution Highway Full Implementation New Pilots

New Route SHARE TriWay PCT Partnerships

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Patent Prosecution HighwayPatent Prosecution Highway

ConceptAllows an applicant to fast-track prosecution

in second office when first office finds one or more claims allowable in the corresponding application

BenefitsSecond office gets search and examination

results from first Office before conducting its own examination. Applicant gets results faster with higher quality.

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The USPTO and the Japan Patent Office (JPO) worked together to establish the PPH Program.– See Patent Prosecution Highway Pilot Program between the United

States patent and trademark Office and the Japan Patent Office, 1307 Off. Gaz. Pat. Office 61 (June 13, 2006); and

– Revised Requirements for Requesting Participation in the Patent Prosecution Highway Pilot Program in the USPTO, 1314 Off. Gaz. Pat. Office 1398 (Jan. 30, 2007).

– Revised Requirements for Requesting Participation in the Patent Prosecution Highway Pilot Program in the USPTO, 1319 Off. Gaz. Pat. Office 63 (June 12, 2007).

– Notice Regarding Full Implementation of Patent Prosecution Highway Program between the USPTO and the JPO, 1328 Off. Gaz. Pat. Office 44 (March 4, 2008).


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The USPTO and the United Kingdom Intellectual Property Office (UKIPO) launched a PPH Pilot Program.– See Patent Prosecution Highway Pilot Program between the United States

Patent and Trademark Office and the United Kingdom Intellectual Property Office, 1322 Off. Gaz. Pat. Office 258 (Sept. 25, 2007).

– Revised Requirements for Requesting Participation in the Patent Prosecution Highway Pilot Program in the USPTO (Between the USPTO and the UKIPO), 1327 Off. Gaz. Pat. Office 54 (Feb. 5, 2008).

This pilot program has been extended “until further notice”– Extension of the Patent Prosecution Highway Pilot Program Between the

USPTO and the UKIPO, 1336 Off. Gaz. Pat. Office 149 (Nov. 18, 2008).


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The USPTO and the Canadian Intellectual Property Office (CIPO) launched a PPH Pilot Program.– See Patent Prosecution Highway Pilot Program between the United States

Patent and Trademark Office and the Canadian Intellectual Property

Office, 1327 Off. Gaz. Pat. Office 45 (Feb. 5, 2008). – Pilot Extended until January 28, 2011. See 1338 OG 99 (Jan. 13, 2009).

The USPTO and the Korean Intellectual Property Office (KIPO) have fully implemented PPH Program.– See Patent Prosecution Highway Pilot Program between the United States

Patent and Trademark Office and the Korean Intellectual Property Office, 1327 Off. Gaz. Pat. Office 49 (Feb. 5, 2008).

– See Notice Regarding Full Implementation of Patent Prosecution Highway Program between the USPTO and the KIPO, (signed Jan. 28, 2009).


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The USPTO and the IP Australia launched a PPH Pilot Program.– See Patent Prosecution Highway Pilot Program between the United States

Patent and Trademark Office and the IP Australia, 1329 Off. Gaz. Pat. Office 165 (April 22, 2008).

This pilot commenced April 14, 2008 and is scheduled to expire April 14, 2009.


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The USPTO and the European Patent Office (EPO) launched a PPH Pilot Program.– See Patent Prosecution Highway Pilot Program between the United States

Patent and Trademark Office and the European Patent Office, 1355 Off. Gaz. Pat. Office 196 (Oct. 21, 2008).

– Revised Requirements for Requesting Participation in the Patent Prosecution Highway Pilot Program in the USPTO (Between the USPTO and the EPO), 1338 Off. Gaz. Pat. Office 48 (Jan. 6, 2009).

This pilot commenced Sep. 29, 2008 and is scheduled to expire Sep. 29, 2009.


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The USPTO and the Danish Patent and Trademark Office (DKPO) launched a PPH Pilot Program.– See Patent Prosecution Highway Pilot Program between the United States

Patent and Trademark Office and the Danish Patent and Trademark Office, 1336 Off. Gaz. Pat. Office 150 (Nov. 18, 2008).

This pilot commenced Nov. 3, 2008 and is scheduled to expire Nov. 3, 2009.


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The USPTO and the Intellectual Property Office of Singapore launched a PPH Pilot Program.– See Patent Prosecution Highway Pilot Program between the United States

Patent and Trademark Office and the Intellectual Property Office of Singapore, (signed Jan. 29, 2009) available at:

– http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/sing_pph_20090129.pdf

This pilot commenced Feb. 2, 2008 and is scheduled to expire Feb. 2, 2009.


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Applicants whose claim(s) is determined to be patentable in the office of first filing (OFF) may request that the corresponding application filed in the office of second filing (OSF) be advanced out of turn for examination, provided certain conditions are satisfied.

The OSF gives priority to the examination of the corresponding application.

The corresponding application receives a complete examination in the OSF because of differences in the patent laws, including what qualifies as prior art (101, 112, 102(e), claim interpretation, etc.).


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The office of second filing would be able to exploit the search and examination results of the office of first filing.

Applicant may be able to obtain a patent on the corresponding application filed in the office of second filing faster.

If the USPTO is the OFF and the U.S. application contains claims that are determined to be allowable, applicants may request to have the corresponding application filed in the OSF or advanced out of turn for examination in the OSF.


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If the JPO, UKIPO, CIPO, KIPO, DKPTO, IPAU, IPOS or is the OFF and the application contains claims that are determined to be allowable, applicant may petition to make the U.S. application special under the PPH program.

The programs maintain consistency to the extent possible with each other to avoid creating burdens on applicants and Offices, an to ensure maximum worksharing potential.


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The procedures and requirements for filing a request for participation in the fully implemented JPO PPH program are available from:– The JPO web site at: http://www.jpo.go.jp/

The procedures and requirements for filing a request for participation in the UKIPO, CIPO, or KIPO PPH programs are available from:– The UKIPO web site at: http://www.ipo.gov.uk/home.htm

– The CIPO web site at: http://www.cipo.ic.gc.ch/pph/

– The KIPO web site at: http://www.kipo.go.kr/kpo2/user.tdf?a=user.english.html.HtmlApp&c=60622&catmenu=ek60600


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Patent Prosecution Highway Patent Prosecution Highway Pilot Program - Requirements Pilot Program - Requirements

Requirements: The U.S. utility application filed under 35 U.S.C. 111(a)

must claim foreign priority to the OFF application under 35 U.S.C. 119(a)-(d) and §1.55 or through a PCT.

The OFF application must contain at least one claim that was determined by the OFF to be allowable.

All the claims in the U.S. application (including any subsequently amended or added claims) must sufficiently correspond to the allowable claims in the OFF application.– The claims must have the same or similar scope. – They could have differences due to translations and claim format

requirements.

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Patent Prosecution Highway Patent Prosecution Highway Pilot Program – Requirements Pilot Program – Requirements

Requirements (continued) - - Applicant must file: A request for participation in the PPH program, and a petition to

make special accompanied by the petition fee under § 1.17(h) (see PTO/SB/20xx) prior to the first Office action on the merits;

A copy of all OFF Office actions (excluding “Decision to Grant a Patent”). If not in English, an English translation thereof, and a statement that the English translation is accurate;

An information disclosure statement (IDS) under §§ 1.97 and 1.98 listing the documents cited by the OFF examiner; and

A copy of the allowable claims in the OFF application. If not in English, an English translation thereof and a statement that the English translation is accurate.

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Patent Prosecution Highway Patent Prosecution Highway Pilot Program - Requirements Pilot Program - Requirements

Requirements (continued): Applicant must submit a claims correspondence table in

English to indicate how all of the claims in the U.S. application correspond to the allowable claims in the OFF application (see PTO/SB/20xx).– Updated claims correspondence table may be required for an

amendment to the claims. – More information regarding the PPH program is available at

http://www.uspto.gov/web/patents/pph/pph_index.html

Inquiries on the pilot program should be directed to Magdalen Greenlief at 571-272-8800 or via e-mail addressed to [email protected]

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Patent Prosecution Highway Patent Prosecution Highway Full Implementation Differences Full Implementation Differences

Papers must be filed through EFS-Web. Only a copy of the JPO Office action just prior to the

“Decision to Grant a Patent” (e.g., the latest “Notification of Reasons for Refusal”) along with an English translation thereof, and a statement that the English translation is accurate need be submitted.

If there was no “Refusal” then applicant should indicate on the request form that no JPO action is submitted since the JPO application was allowed on first action.

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OutcomeAccelerated examination in OSFFaster patentability determination in OSFWork-sharing benefit

All PPH submissions must be filed via EFS-Web

Number of Countries implementing Bilateral PPH agreements between their Intellectual Property Protection Organizations continues to grow.


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Empirical Observations by US Examiners– Claim sets narrower than in a typical US case– Fewer claims than in a typical US case– Focused US search on non-Japanese language art

Anecdotal Feedback of Advantages– Narrower field of search– Fewer claims = faster processing– Better base of prior art (from which to start)

But there are Issues– Search History documentation– Reasons for Allowance would be helpful


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Patent Prosecution Highway Program Patent Prosecution Highway Program Data and StatusData and Status

PPH Partner

Type Start Date End Date Requests Received (12/31/08)

JPO pilot 03 Jul. 2006 03 Jan. 2008 274JPO Full

Implementation04 Jan. 2008 n/a 520

UKIPO pilot 04 Sept. 2007 Extended, as pilot, until further notice

50

KIPO pilot 28 Jan. 2008 28 Jan. 2009 125KIPO Full

Implementation28 Jan. 2009 n/a n/a

CIPO pilot 28 Jan. 2008 Extended, as pilot, until 28 Jan. 2011

6

IPAU pilot 14 Apr. 2008 14 Apr. 2009 4EPO pilot 29 Sept. 2008 29 Sept. 2009 1DKPTO pilot 03 Nov. 2008 03 Nov. 2009 0IPOS Pilot 02 Feb. 2009 02 Feb. 2010 n/a

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As of 12/31/08, the Office has received a total of 980 requests.– TC 1600 – 41

– TC 1700 – 132– TC 2100 – 171– TC 2400 – 17– TC 2600 – 316– TC 2800 – 171– TC 3600 – 69– TC 3700 – 63

Patent Prosecution Highway Patent Prosecution Highway Program DataProgram Data

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Overall allowance rate is 94% (more than double the patent examining corps overall allowance rate).

Average actions per disposal is about 1.7.

Average period from grant of request to first action is about 3 months if the application is ready for examination when request is granted.

Patent Prosecution Highway Patent Prosecution Highway Program DataProgram Data

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New RouteNew Route

Concept Similar to PCT, but with less administrative

overhead and costs Filing in one member office is deemed a filing

in all member offices 30-month processing and 18 month

publication by first office

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New RouteNew Route

BenefitsAll designated second offices get search and

examination results from first Office prior to “national stage” examination

Applicants save money, get higher quality patents New Route Pilot Project between the United

States Patent and Trademark Office and the Japan Patent Office 1332 Off. Gaz. Pat Office 422 (July 29, 2008) (signed 24 Jan. 2008) http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/new_route_pilot_012008.pdf

New Route – USPTO & JPO

OFF

OSF

a) Using domestic priority

b) Using PCT priority

DomesticApplication

FirstOfficeAction

0-26 months from priority

date

Only 1Priority

PCTISR,WOSA

InternationalPublication

Entry intoNationalPhase

FirstOfficeAction

FilingDate

12 months 18 months 30 months

OFF

OSF

EnteringNationalPhase

FirstOfficeAction

0-28 months from priority

date

PCTISR,WOSA

InternationalPublication

Entry intoNationalPhase

FirstOfficeAction

FilingDate

18 months 30 months

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New RouteNew Route

Information regarding the New Route pilot project is available at http://www.uspto.gov/web/patents/pph/newroute_jpo.html

Information regarding the New Route pilot project is also available from the JPO website at http://www.jpo.go/jp/torikumi/t_torikumo/japan_usa_newroute_e.htm (English).

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SStrategic trategic HHandling of andling of AApplications pplications for for RRapid apid EExamination - xamination - SHARESHARE

SHARE is a proposal to implement a policy of prioritizing search and examination of first filings, with the stated goal of leveraging the work of the Office of First Filing (OFF) to enhance the throughput and quality at the Office of Second Filing (OSF).

The SHARE proposal would prioritize examination of applications by giving precedence in examination of applications filed with the OFF.

SHARE has a goal of leveraging worksharing to the maximum extent possible consistent with appropriate examination under each Office’s statutory framework.

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TriWay TriWay

The USPTO, the EPO, and the JPO launched a Triway Pilot Program.– See “Triway” Pilot Program among the United States Patent and Trademark

Office, the European Patent Office, and the Japan Patent Office, 1333 Off. Gaz. Pat. Office 50 (Aug. 5, 2008).

The program commenced July 28, 2008, and is scheduled to run through July 28, 2009 or the acceptance of 100 requests submitted to the USPTO as OFF, whichever occurs first.

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TriWayTriWay

Concept- USPTO initiative to leverage the expertise of each

Office in searching its own documentation and/or documentation in its native language (e.g., Japanese documentation searched by JPO)

- Each Office searches corresponding application and provides results to other offices for use in examination

Benefits- Higher quality search and examination

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TriWayTriWay

Information regarding the Triway pilot program is also available:– from the EPO Web site at

http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20080716.html

– from the JPO Web site at http://www.jpo.go.jp/torikumi_e/t_torikumi_e/triway_e.htm

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PCT PartnershipPCT Partnership

Concept Outsourcing PCT Chapter I by contract Designating alternative ISAs for US applicants

filing in RO/US or RO/IB – AU, EP & KR Benefit

Frees up USPTO examining resources by having other entities do PCT Chapter I work

Reduces Pendency of National Applications

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Outsourcing of Chapter I PCTsOutsourcing of Chapter I PCTs

Approximately 95% of USPTO Chapter I work is outsourced

Work is outsourced via two contractsTwo private contractors

All outsourced work is reviewed by USPTO personnel prior to mailing

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Choice of ISA for International Choice of ISA for International Applications filed in RO/USApplications filed in RO/US

ISA/US ISA/EP ISA/KR ISA/AU*

FY2007 55% 40% 5% N/A

FY2008 43% 41% 17% N/A

Oct 2008 38.2% 38.4% 23.4% N/A

Nov 2008 37.7% 38.4% 23.7% 0.2%

Dec 2008 33.6% 43.2% 23.1% 0.1%

Jan 2009 35.5% 37.6% 26.9% 0%

Search Fee (as of 01 Feb 2009) : ISA/US:$2080, ISA/AU:$1091, ISA/EP:$2410, ISA/KR:$609

*ISA/AU available as of 01 Nov 2008

Contact Information

Robert Clarke

[email protected]

(571) 272-7735

mailto:[email protected]

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Thank You!Thank You!

worksharing robert a. clarke director, office of patent legal administration united states patent...

Documents

overview overview office

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overview overview programs

overview overview need

patent examination

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