Reducing Patent Backlog by International Cooperation

Patent backlog in recent years has become a serious problem for the USPTO. In 2011, the patent backlog amounts 640,491. According to the patent Director David Kappos, the goal is to have the patent load down to about 330,000 by 2015, with an average process taking about 20 months. Patent backlog poses serious obstacles for inventors to fully use their inventions, and thus dampens their incentives to innovate. This is especially true nowadays since technologies change faster and faster. An invention may well be past its time of being a leader in the industry by the time a patent is issued. The problem is more serious for entrepreneurial inventors, who lack the resources to massively produce the invention and hope to license it to big companies. Without patent protection, they have little to protect themselves with or bargain with potential manufacturers. Luckily, the US is not on its own. It can use the help from other intellectual property offices (who also suffer from patent backlog) to solve patent backlog together.

On Nov. 16, 2011, a coalition of the world’s five largest patent offices – the IP5 – announced the upcoming release of the IP5 Statistics Report 2011 Edition (which is not available to the public yet). The IP5 comprises the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). The IP5 Offices, which together handle about 90% of the world’s patent applications, is working together to explore ways to optimize their joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.

The IP5 have been engaged in ten collaborative projects that were devised to harmonize the search and examination environment of each office and to standardize the information-sharing process. For example, the Common Access to Search and Examination Results project aims at building a service by which examiners of the IP5 will be able to refer to related dossier information of other offices in one stop, and proceed with the examination taking into consideration the search/examination results, cited documents and classifications of other Offices. In the Common Training Policy project, the IP5 aims at enhancing the trust among the IP5 Offices with regard to the mutual utilization of examination results. Just on Oct. 26, 2012, the fourth IP5 Examiners’ Workshop, hosted by the State Intellectual Property Office of the P.R.C., closed in Beijing. It provided examiners from the IP5 offices with an opportunity to discuss the topics of searching, prior art, novelty and inventive step, based on common patent applications in the fields of chemistry, mechanics and electricity.

That being said, the work sharing scheme will only be applicable to patent prosecution under the Patent Cooperation Treaty (“PCT”). While the PCT provides a valuable way to protect an invention internationally, if one decides to pursue patent in only a few countries, PCT applications tend to be more complicated, time consuming and expensive than filing applications separately in each country. It is worthwhile to explore the possibility of sharing documents and search results among the IP5 Offices beyond PCT applications. Limiting the sharing to documents and search results only can reduce the concern that an applicant will be unfairly prejudiced in one office because his application is rejected by another. It can also save an examiner substantial time and improve examination quality by giving him a second prior art search result for reference.

 

About the Author

Meiqiang Cui

Meiqiang Cui is a Staffer for the Columbia Science and Technology Law Review. She is a 2L at Columbia Law School.
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