The United States Patent and Trademark Office today announced two news items relative to its efforts to expand international work sharing arrangements. First, On May 19, 2010, USPTO Director David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu signed a Memorandum of Understanding (MOU) on comprehensive bilateral cooperation on patents. The signing took place during a signing ceremony held at the USPTO campus in Alexandria, Virginia. Second, in a separate and seemingly unrelated item, the USPTO also announced today that it would eliminate the fee for the petition to participate in Patent Prosecution Highway (PPH) programs. The elimination of the PPH petition fee is expected to encourage greater PPH participation by patent applicants. The good news is that yet more is being done to address the backlog and pendency. But I am still hoping for a plan aimed straight at independent inventors and start-up businesses here in the U.S.
The deal reached with China primarily focuses on the building of work sharing programs, including a bilateral Patent Prosecution Highway (PPH) agreement. Such work sharing arrangements are viewed by Patent Offices around the world as an important tool that can be used to reduce growing international patent backlogs and shorten patent pendency. Since 2006, the USPTO has entered into PPH agreements with the patent offices of Australia, Canada, Denmark, Finland, Germany, Japan, Korea, Singapore, The United Kingdom, the European Patent Office (EPO) and now China.
The MOU entered into between SIPO and the USPTO establishes a general framework for bilateral cooperation between China and the United States. The ultimate goal is to improve the administration and effectiveness of the intellectual property systems through the exchange of information. The countries will also endeavor to develop best practices and engage in other cooperative activities as their bilateral cooperation moves forward.
“This memorandum reconfirms and further strengthens our commitment to the growing cooperative relationship between our two offices,” said Under Secretary Kappos. “I am especially pleased that we have agreed to work toward constructing a Patent Prosecution Highway where both Offices can leverage each other’s examination expertise to eliminate work redundancy, increase efficiency and increase patent quality.”
Commissioner Tian added, “Since I last visited in 2006, the bilateral cooperation between our two offices has advanced significantly. This MOU takes note of our accomplishments, advances our shared vision of bilateral cooperation and further reinforces the partnership between USPTO and SIPO.”
This latest PPH deal with China becomes more significant since the U.S. Patent Office will no longer require an additional fee to participate. Until now, the PPH notices have indicated that a request for participation in the PPH program required the payment of a $130 petition fee. Despite the fact that a $130 fee is largely a drop in the bucket with respect to the overall costs associated with preparing and pursuing issuance of a patent, Kappos thinks that dropping the fee will make the PPH more attractive to applicants.
“Patent Prosecution Highway programs have great potential to reduce unnecessary duplication of work between offices, reduce pendency and improve quality,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By eliminating the petition fee, we expect to see more applicants take advantage of PPH.”
The Patent Office likes PPH applications because they take significantly less time to prosecute, on average, than non-PPH applications. This is as a result of being able to re-use of information, such as previous search and examination results, between and among the USPTO and partner patent offices. Thus, even though a $130 petition fee is not likely to be a deciding factor in many, if not most, situations, if PPH applications are easier to handle and take less time to prosecute then it make sense to remove whatever barriers exist to its use. Simply put, if it takes less time to prosecute PPH applications and the Patent Office can be more efficient why would they have ever charged a petition fee? Improving the PPH framework to make it more user-friendly, and thereby encouraging greater participation by applicants, would seem to support the Office’s goal to optimize both the quality and timeliness of patents.
In any event, under the various PPH programs, if an application filed in an Office of First Filing (OFF) receives an indication that at least one claim is patentable, a corresponding application with corresponding claims filed in the USPTO as the Office of Second Filing (OSF) may be advanced out of turn for examination. To have the request for participation in the PPH accepted in the USPTO, an applicant must make available to the USPTO the relevant work of the OFF as well as any necessary translation.
It is encouraging to see expansion of the PPH programs to include China and the dropping of the petition fee. This seems to be in keeping with the “all of the above” approach to addressing the patent backlog and pendency issues plaguing the U.S. Patent Office. Nevertheless, with a PPH program it is unlikely that such benefits of higher quality and more timely treatment will inure to the benefit of independent inventors and truly small businesses. The cost of obtaining a patent overseas is quite large, and most independent inventors and many truly small businesses are simply unable to afford an international patent strategy. In many cases even a quality, competent and well-developed U.S. strategy is beyond their means, forcing them to cut corners when seeking to protect innovations.
Additionally, while I am all for making the patent process faster, more streamlined and responsive to applicants of all sizes, the PPH by its very nature requires that the first patent application be filed first in a Patent Office other than the USPTO in order to be advanced out of turn within the U.S. Therefore, those patent applications that will be advanced out of turn in the U.S. must necessarily be applications of foreign corporations and foreign inventors. This is true because if the invention is conceived in the United States then a patent application must first be filed in the United States and a foreign filing license obtained prior to filing an application for a patent outside the U.S. So we are giving benefits to those who are not U.S. citizens or U.S. corporations.
To be sure, if a patent application is filed in the United States and at least one claim is determined to be patentable then an application can be advanced out of turn in another country that has a bilateral or trilateral PPH agreement with the U.S. Again, this likely means that there will be no benefits to independent inventors or small businesses, and small businesses are disproportionally where jobs are created in the U.S.
I continue to be supportive of any and all efforts to reduce the backlog, reduce patent pendency and streamline the patent process. Having said this, I really hope that soon there will be some kind of acceleration or advancement program that is directly aimed at independent inventors and truly small businesses, like the many start-up companies that can lead us out of this Great Recession and create jobs in America. That is why yesterday I suggested an acceleration plan aimed at independent inventors and small businesses younger than 5 years old and having 99 or fewer employees. See Proposal: Unlocking Job Growth with Patent Acceleration. If the Patent Office comes up with a plan for these job creators who are the backbone of the U.S. economy and backbone of American innovation, then the “all of the above” approach will come full circle and truly start to help everyone, and particularly those who are most likely to create jobs in America.