Fixing PCTs in the US – USPTO Suggestion
The Patent Cooperation Treaty is the “international patent application.” It is a bundle of 190+ patent applications for virtually every country in the world. Part of this process is an International Search Report, which is your first indication of patentability.
When you file a PCT application, you have an option for where you want the International Search Report (ISR) to be performed. In the US, we have the option for the USPTO, but also the European Patent Offices, Singapore, Australia, Korea, and many others.
Currently, the US is notoriously the worst place to get your search performed.
The reason why the US is the worst place for the International Search Report is because the USPTO outsources the PCT searches to a contractor. The searcher gets paid a paltry amount (maybe $300) to do a complete prior art search, examine all the claims, and write a 1-5 page reasoned opinion.
As such, the International Search Reports and Written Opinions (ISR/WO) from the USPTO are never taken seriously.
Contrast that to the European Patent Office.
The EPO “eats its own dogfood.” When the EPO issues the ISR/WO, it stands behind it. If the claims were allowable in the ISR/WO, they are allowable when you enter national phase in Europe. In the US, the US patent examiner gives the US-generated ISR/WO zero credence. I have had examiners tell me that they will go out of their way to show that the US-generated ISR/WO was incorrect by rejecting the claims.
Fix: Bring International Search Reports back to the USPTO.
Why are International Search Reports being done by contractors?
Several years ago, the pendency of US patent applications was growing, along with the backlog of unexamined applications. The solution at the time was to unburden our experienced, USPTO-trained in-house examiners and transfer all the PCT cases to a contractor.
In the short term, the backlog eased, as the number of cases being examined dropped. However, the patent quality dropped tremendously.
The backlog – and the “fix” – are shown in the big spike of backlogs in 2008 for the USPTO here: (source: WIPO Data Portal)
The US-generated ISR/WO searches are currently so bad that it is malpractice for US patent attorneys to file PCT applications and select the USPTO as the International Searching Authority.
Fixing the PCT Searches: Two-For-One Special Status.
The PCT treaty requires that the International Search Reports be issued within three months of filing the PCT.
This means that PCT ISR/WO (if implemented with USPTO examiners) would have to be done with “Special Status.” Special Status creates some headaches for the Examining Corps, like with Track One.
Two Birds with One Stone
A knee-jerk reaction to this suggestion of having the USPTO do its own ISR/WO is to assume that “the backlog will increase.”
That is not true.
Every ISR/WO done by the USPTO is the equivalent of a First Action on the Merits. Virtually every PCT application has a corresponding US patent application, this is just a first step on what would already be in the pipeline.
Doing the IRS/WO does not add to the examining burden, it actually reduces the examinations and doubles throughput. That examination was already going to be done at some point in the US National Phase case. The Examiner who is assigned the PCT search used to be assigned the same corresponding US case. When this happens, the Examiner does a single search and gets credit for two examinations – one for the PCT ISR/WO and another for the US application.