USPTO and UKIPO Progress Report on Worksharing Initiative

By Gene Quinn
April 19, 2012

On November 10, 2010, the United States Patent and Trademark Office  (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) initiated a work sharing arrangement whereby each office would utilize the work product (i.e., search and examination results) of the other office.  By sharing work product and relying, at least in part, on the efforts of another office it was believed that the patent process could be expedited and the growing backlog of patent applications alleviated by not having to re-invent the wheel (so to speak).  Specifically, the program sought to increase the efficiency of the patent application process and improve quality in the examination process.

In order to assess the success of the program the USPTO and UKIPO collaboratively developed an examiner survey designed to empirical data to be used for assessing the impact of work sharing on both efficiency and quality.  Examiners from both the USPTO and UKIPO were asked to complete the survey, and the preliminary report that presents the results from these surveys was released earlier today.

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Here are some of the interesting findings from the examiner surveys:

Regarding Usefulness of Prior Art

  • In 59% of cases UKIPO examiners found the USPTO prior art search to be “at least useful.”
  • In 65% of cases examiners found the USPTO substantive examination to be “at least useful.”
  • 44% of USPTO examiners thought that the work provided by UKIPO was useful to a “great or moderate extent.”
  • In 42% of the selected applications USPTO examiners applied art that was cited in UKIPO actions.
  • USPTO examiners found more references when searching, and UKIPO examiners deemed these citations useful, with UKIPO examiners citing an average of 1.6 more documents per case.

Regarding Conclusions

  • In 66% of cases considered, examiners at the UKIPO came to at least some of the same conclusions as the USPTO examiner on novelty, with 50% being in full agreement.
  • In 63% of the USPTO applications, examiners came to at least some of the same conclusions as the UKIPO examiner on novelty.  Of those, 20% were in full agreement.

Regarding Inventive Step

  • In 55% of UKIPO applications, examiners came to at least some of the same conclusions as the USPTO examiner on inventive step, with 30% being in full agreement.
  • In 64% of the USPTO applications, examiners came to at least some of the same conclusions as the UKIPO examiner on inventive step.  Of those, 21% were in full agreement.

It was interesting to read that UKIPO examiners believe it was too time-consuming to take into consideration USPTO work product “especially if the USPTO examiner took a different view from the UKIPO examiner.”  The report does, however, state the obvious based on the survey results: “[A]n analysis of the data reveals that UKIPO examiners frequently cited extra documents upon considering U.S. work products, suggesting that the quality of UKIPO patents granted is improved as a result of work sharing.”

The thing that struck me most from these survey results was the superiority of USPTO searches.  I’m sure you have heard the same criticisms and joking that I have.  Many, particularly Europeans, love to criticize and even make fun of the searches done by the USPTO.  If anything these survey results suggest that the USPTO does a better search than is done in the UKIPO.  After all, under UKIPO practice, examiners only cite extra documents if they are more relevant than those already found by the UK search.  So when they rely on US references that means they must have been more relevant than what they found.  So much for the alleged inferiority of USPTO searches.

Interestingly, the survey also shows that the claims going from the USPTO into the UKIPO are far more likely to be identical or substantially similar than those claims coming from the UKIPO into the USPTO.

Taking into account the similarity of claims and the fact that USPTO searches seem more useful to the UKIPO, it would seem that the UKIPO derives greater benefit from the work-sharing arrangement than the USPTO.

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So where do we go from here?  The report explains that further cooperation is necessary, and explains:

The preliminary results suggest that further cooperation should be  undertaken to explore the differences in practice between the Offices,  particularly regarding novelty and inventive step/non-obviousness.  Collaboration on these issues could facilitate a deeper understanding  among examiners and help to close gaps, in turn leading to more effective reutilization of work products.

Primarily two specific recommendations that came from this progress report on the USPTO-UKIPO work sharing initiative.  They are:

  1. The USPTO and UKIPO should continue their work sharing cooperation, with a focus on increasing examiner understanding of each Office’s practice.
  2. The USPTO and UKIPO should engage stakeholders to identify best practices for leveraging the benefits of work sharing in reducing costs and delays in prosecuting corresponding patent applications.

As I sit here and read this I can’t help but search for the meaning behind the words.  International negotiation on streamlining the patent process has uniformly focused on demands for the United States to do things differently.  Typically there is lip-service paid to the establishment of “best practices,” but the reality is that those best practices never seem to incorporate the way the patent process is handled in the United States.  Rather, the European and world-wide view of best practices is that their way is superior and the Americans just need to get on board.  But the indifference of the UKIPO examiners even in the wake of USPTO examiners finding more prior art suggests to me that perhaps it is time for Europe to get on board with the US, not the other way around.

Perhaps I am making too much out of this, but “explore the differences in practice… particularly regarding novelty”?  Let’s be honest with each other for a moment.  There doesn’t need to be any exploration of the differences.  We all know what the differences are and it seems ridiculous to suspect that patent examiners in the USPTO and patent examiners in the UKIPO don’t understand the differences.  The differences are well known by everyone.  The United States allows for a grace period under 102(b) and the rest of the world follows an absolute novelty rule that allows for no grace period.

What the Europeans want is for the United States to do away with the grace period altogether.  Truthfully no one should rely on the grace period.  Filing early is always preferable and preserves foreign rights.  Too many people misunderstand the grace period, which is not a personal grace period at all.  If anyone publicly uses or sells more than 12 months before the filing of a patent application all ability to obtain a patent is lost.  But how do you know what others have done publicly or whether they have sold?  Precisely why filing early is always better.  Nevertheless, I find the European and world-wide view condescending.  Exactly what is wrong with the grace period providing a safety net?  In the United States many great inventions come from first time inventors who are not knowledgeable about the patent laws and requirements.  What is the harm in having a safety net to protect them?  Nothing — unless of course your laws and systems are set up to favor large corporations instead of innovators and start-up businesses.

Until the enactment of the America Invents Act the United States has always had a patent law that places independent inventors, small businesses and start-ups on at least equal footing with large corporations.  This matches the U.S. approach to small businesses, which employ approximately 70% of those with jobs in the United States.  This is not the European experience though.  In Europe large corporations dominate the landscape.  Thus, it is frustrating to me to constantly be told we need to become more like Europe and the rest of the world.  If we do our economy substantially changes and if you haven’t noticed countries in Europe are in tremendous financial turmoil, not having weathered this recent economic downturn very well at all.

Simply, when the U.S. economy catches a cold the European economy catches the flu.  So why is it that we want to become more European again?

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. MuenchnenOst April 20, 2012 4:14 am

    Two questions and a comment, Mr Quinn, sir:

    1. Is the UKIPO search fee still GBP 130? How good a search report will that money yield?

    2. How many times in the day to day work of a PTO Examiner does the grace period come up? I will wager that it never arose, in all the work that went in to this study. I will wager that the grace period is NOT what they are on about in this Interim Report, when they go on about differences in the area of novelty.

    40 countries in Europe have the same substantive law of novelty, the EPC. But each has its own Supreme Court. It took 10 years before the UK Supreme Court fell in behind the line on novelty set by the EPO. Understandably, it took the German Patent Supreme Court rather longer, 30 years, to bend the knee but Germany is at last in line now. Take 50 USPTO Examiners and 50 at the UKIPO. Give them each the same claim and ask them if its novelty is prejudiced by a prior-published issued US patent (let’s call it Quinn). If you get 100 different answers you have a problem, but one which is not going to be solved by USPTO/UKIPO work-sharing.

    But if you get an identical answer from all 50 USPTO examiners and a single different answer from all 50 UKIPO examiners, that is a result to show the pols that the impediment to harmonisation lies elsewhere than in the PTO.

    These days, Patent Office search reports are available to the public on the PTO file. It is my experience that Examiners in the EPO and the PTO of China do indeed look at the PTO files of patent family members.

    As to the grace period, from the point of view of the national interest, the GDP and the future of innovation, what is so difficult for me to pin down is whether the advantage it gives unfinanced inventors outweighs the pause I see it giving to those who would otherwise invest in innovation within established corporations.

  2. Ron Hilton April 20, 2012 9:05 am

    My limited experience so far with the USPTO vs. UKIPO is that the latter is much more strngent in requiring literal, practically verbatim support in the specification for claim amendments. My UK counterpart has told me that “new matter” is a big issue in UK examination, due to differences in the US/UK statutes.

  3. Gene Quinn April 20, 2012 10:34 am

    MuenchnenOst:

    You say: “if you get an identical answer from all 50 USPTO examiners and a single different answer from all 50 UKIPO examiners, that is a result to show the pols that the impediment to harmonisation lies elsewhere than in the PTO.”

    Getting an identical answer on any case from 50 USPTO examiners is exceptionally unlikely, but your point is excellent. At least they are applying only one view of the law.

    I don’t see the grace period as any kind of impediment to established corporations. They don’t rely on it because you shouldn’t. If you do you give up foreign rights. So having it as a safety net when there is no other disclosure other than the disclosure of the inventor seems appropriate to me, particularly if you ascribe to the U.S. view that favors small businesses. We can say they should know better, but the reality is that most don’t. Even those who have a sense that it is important to keep the invention secret will frequently keep it secret in the real world sense, but share it with close friends and family they can trust, which technically should create a prior art problem.

    -Gene

  4. MuenchnenOst April 20, 2012 11:56 am

    The impediment I see is the level of uncertainty in the minds of those investing the money in inovation whether, on the percentages, the contemplated investment in innovation is a good bet. A grace period adds to the uncertainty, what enforceable patent rights might be out there, to emerge later, after the money’s been spent.

    Germany used to have a grace period and now doesn’t. Take the German auto industry. Is there less innovation than there used to be, because the grace period has gone? Or is there in fact much more innovation in there today?

    50 different answers on novelty of the claim over Quinn, from those 50 different USPTO Examiners, further adds to the level of uncertainty, whether or not to invest.

    Telling your invention to business associates, friends or relatives (or anybody else under some sort of explicit or implicit understanding of confidentiality) does not add to the state of the art under the EPC, so is not prejudicial to patentability

  5. Stan E. Delo April 20, 2012 3:10 pm

    MuenchnenOst-

    Perhaps consider the flip side of the coin from the independent or small business inventor’s perspective as regards the now largely gone US one year grace period. I will use my own experience as an example of why it can be so important, especially when you are working with a very small budget.

    I recently invented several different ways to automatically control wind turbines, but by their nature, it was nearly impossible to tell which would work best, or even work at all! One thing I tried was contacting the foremost expert in virtually simulating the behavior of wind turbines here in the US, if not the world, and asked him to take a look at the concepts under a NDA, and he graciously agreed. He seemed to like all of them, so we got down to brass tacks, and it seemed it cost upwards of $120,000 to do a simulation that would be reasonably accurate!?! Perhaps a large corporation could afford that, before they decided to build one after they had filed a patent application, but I certainly couldn’t as an unfunded independent. I also couldn’t afford to file 3 or 4 applications, especially since I wasn’t sure if any of them would even work at all.

    My solution was to build a 3 meter diameter *model* wind turbine, so that I could try different things in real world wind conditions, which even a sophisticated wind tunnel cannot simulate. The first one I tried had serious problems that I hadn’t anticipated, but the second one performed even better than I had hoped. I used a hub spinner to hide the mechanical linkages from prying eyes or high speed cameras, but the behavior of the blades in operation gave a strong clue as to what was going on. I then filed a Provisional application to buy some time to refine things, and later filed a formal application.

    Also, I really appreciate the discussion about divulging the invention to close friends and family, as I have never been able to get a clear answer to that aspect as regards whether it could cause huge problems later. One friend of mine who looked at it suggested a *Friend Disclosure Agreement*, which seems to be what you are saying in your last paragraph @ comment #4 as a sort of implicit agreement, but I always ask others not to discuss it with others in any specific way. The guy that suggested the FriendDA approach had previously insisted upon a valid Non-Disclosure Agreement, which we had completed before we consulted on the ideas.

    Best regards,
    Stan~

  6. MuenchnenOst April 20, 2012 4:56 pm

    I should like to make a helpful comment, Stan, but i regret, none comes to mind. I’m astonished at your optimism though. Do you really suppose you have something that the established, engineering-rich and fiercely competing European, Asian and American makers of wind turbines have not themselves already considered, to give their product an edge over the competition? Whatever concepts that have occurred to them, been tested by them and, in the last 18 months filed on, have of course not yet been published. Will your next invention be an improvement to a BMW or to a Boeing?

  7. Stan E. Delo April 20, 2012 6:01 pm

    MuenchnenOst-

    In my opinion, unbridled optimism is sometimes where really good inventions come from. I have searched it six ways from Sunday, including publications, and neither I or my very experienced patent agent have found anything near it, which allowed for some very extensive claims. I also chased down every foreign reference I could find, and so far, zero, zip, and nada. I requested non-publication, so don’t expect to be able to get a look for at least another 2 years, unless I decide to fast track it through the new USPTO program, wherein the non-publication request will be of course withdrawn.

    Funny you should mention Boeing, as my father worked at the Boeing wind tunnel model shop for about 20 years, helping to build an 8-foot long model of their proposed design for the very first Supersonic Transport back in the mid 70’s or so, that they tested very extensively in their then-new transonic wind tunnel. Unfortunately, at that time the US was going through a profound economic recession much like we are experiencing today, so the US Congress decided to withdraw their funding for the proposed production of a new SST prototype. They even made a wooden mock-up of it, to no avail. My dad then went on to help build a *flutter model* of the then new AWACS (Advanced Warning And Control System) aircraft, which was based upon a military version of a Boeing 707, which has a large flying saucer-looking Radar disc attached above the fuselage.

    Last I heard, they are still in use to this very day, although while driving by Boeing field a while back, I got a few glimpses of the next generation, which is much more compact and streamlined, let us say. Also, Boeing experimented with very large wind turbine control methods back in the mid eighties by building three 285-foot diameter prototypes, that they installed on the edge of the Columbia River gorge near Goldendale, Washington state. I went and looked at them before they were commissioned, and they were breathtaking.

    Unfortunately, after operating for a few months, the computer operated rotating blade tip braking system failed, because BOTH of the redundant hydraulic actuators jammed with debris from somewhere, and the rotor over sped to about 30 RPM instead of the design speeds of 12 to 16 RPM, literally Melting the copper windings out of a 2 million watt generator. Molten copper and all like that.

    After they had fixed it and ran it for a few more months, they were getting strange harmonic vibrations, so they pulled the blades and inspected them. It turned out that one of the eight inch diameter solid Stainless Steel blade support shafts had been cracked transversely about 60% during the initial incident, and why it didn’t fail is only due to shear dumb luck. Boeing decided to stick to building superior aircraft after that.

    Aufwiedersehen,
    Stan~

  8. Richard Belzer April 20, 2012 8:21 pm

    Gene,

    This looks like a very well-intentioned effort. I’m not sure what the minimum correlation between USPTO and UKIPO ought to be–I leave that for the patent mavens. What I do know about is the problematic design and use of surveys. Everybody seems to underestimate how hard it is to do them well.

    So the first thing I always look for is the response rate. If it’s too low, *everything* else about the results becomes suspect.

    I see this sentence in the report:

    “To date 300 responses were compiled in the UKIPO, and 236 responses were compiled in the USPTO.”

    These are response rates. Why don’t they reveal the size of the samples? Were they in the hundreds or the thousands? The larger the sample, the less reliable are these 300 and 236 responses.

  9. MuenchnenOst April 21, 2012 3:24 am

    WOW Stan. You are clearly not just an ordinary inventor. I sincerely wish you all good luck, and a substantial return on your enormous investment. Electricity from wind is a big thing, and getting bigger.

  10. Stan E. Delo April 22, 2012 12:26 am

    MuenchnenOst –

    The term ordinary is a somewhat subjective adverb or adjective, depending upon how you use it. My game plan is to help produce and hopefully sell large numbers of *small* wind turbines, that would by their nature reduce the load on the power grid, as in widely distributed power generation. Perhaps as large as 20 meters in diameter for instance, to power a medium sized manufacturing facility or what have you.

    Sounds sort of far-fetched, until you consider the large distances that Big power has to go here in the US, where the country is roughly 3000 miles by 2000 miles. Somewhat different than the situation in Europe, where nations are much smaller in a geographic sense.

    If enough distributed power generation is in place, it would nearly obviate power crash scenarios, and tend to smooth out the loads, if you can catch my drift a bit. The winds tend to blow wherever the weather is bad, when folks need lights and heat for instance. Here in the Northwest of the US, we have been very fortunate to have very abundant amounts of hydroelectric power available, which results in power prices that are only a third or so as much as power prices in New York, for instance, which my younger brother Carl told me about some ten years ago.

    Things change over time though, and this area is growing very quickly, so there might be no more free lunches available in the near future.

    That being said, Germany and the Netherlands and Denmark and Great Britain have been making us Americans look like fools for not using the immense amounts of wind power that is available here in the US, I suppose just because Americans would rather *buy* oil or whatever just because it seems to be “convenient”.

    Sorry for straying so far off the substantive path Gene, but if I didn’t say it, who else would? Probably nobody.

    Guten abend,
    Stan~

    (It must be 5 PM somewhere!)

  11. MuenchnenOst April 22, 2012 4:11 am

    I like your “smoothing” idea Stan. Europe’s vision is to pipe solar north from the Sahara, and wind-derived energy south west from around Iceland, to feed populous Europe in between. i wonder whether it can pull it off. At least Germany has to get the trunk lines in place quickly, because it is exiting from nuclear and cannot become totally dependent on Russian gas.

    Have you done your sums? How steadily and forcefully does the wind blow, round where you live. You might think it never stops, but even those huge windmills up in the windy north of Scotland are turning only some of the time and the economics of wind power are pretty precarious.

  12. Stan E. Delo April 22, 2012 2:30 pm

    Yes, I have heard of the plan to import power from abroad into Europe, and it makes a lot of sense. It will be very expensive up front to build the super grid and the solar in north Africa, and many more offshore wind turbines in the North. Here in the US big wind is growing by leaps and bounds, as in a 35% increase in capacity in only one year !?! The Midwest especially has some of the best wind resources in the world, and it is generally fairly sparsely populated compared to both the left and right coasts, so there is lots of room for wind turbines there. Apparently that is why the US hasn’t developed large off-shore yet, where the UK, Germany and Denmark, to name just a few, have led the world in that field. Newer designs are ranging up to 7 and ten megawatts, which is staggering to contemplate as regards their logistics.

    Another great result of innovation just recently, is the development of high temperature super-conducting wire, which will be a huge boon for us both, when we get around to building our super grids, but once again, it will be expensive up front, but the reduction in line losses will be profound.

    Here at the entrance to Puget Sound in Washington state, the winds are somewhat mediocre at an average of 12 MPH, but what you can do is just use a larger rotor. It is pretty inexpensive to do that, as the available power increases exponentially as the rotor diameter increases. Pi R squared for the area of a disc in other words. The main problem here in the northern part of the sound is that we have violent wind storms come through pretty frequently. Virtually all of the other small wind turbines that I know of usually just shut down when the winds get over about 35 MPH, which is what my turbines are designed to avoid. While testing my 4 meter diameter eperimental prototype turbine for a few months here at my rural home, I was very fortunate to have a very violent wind storm come through during the day, so that I could get some good pictures of it in operation, and to see how it behaved. The winds were gusting to about 55 or 60 MPH (difficulty in standing in the wind) and veering around by 30 or 40 degrees at times. The rotor just went up to design rotor speed of 320RPM at about 35 MPH and just stayed there, no matter what the wind threw at it. I figure it should be able to continue to operate and continue to generate power in winds well in excess of 100 MPH, but haven’t been there yet. Now that I have a US application in the works though, I can test all I want, and I am considering having a friend of mine blast it with a small Cessna, firmly tethered down to the ground of course. He should be able to produce 140 MPH winds I should think, as his plane cruises at about 120 MPH or so, and I wouldn’t have to wait for months at a time for the next radical wind storm.

    Prost,
    Stan~
    Port Townsend, WA