Worksharing AIPLA Annual Meeting ECLC Committee

1. WorksharingAIPLA Annual MeetingECLC Committee Esther Kepplinger Wilson Sonsini Goodrich & Rosati

2. Worksharing • Leverage the search done in foreign office to reduce the work needed to be done in PTO examination • ~50% of applications filed at PTO are of foreign origin • Patent Offices duplicate work on these applications • Rely on the search of another office to the greatest extent possible • Search exchange showed that outcome of applications same but with different references

3. Worksharing Such reliance could significantly reduce work in PTO, however: • Depends on good quality search done by all examiners in all offices • Depends on timing of the examination in other office • U.S. often is still first to examine • PTO is exploring ways to wait until application is examined in foreign office • Depends on good quality work done in PCTs

4. PTO Efforts • Patent Prosecution Highway • JPO-U.S. • UK –U.S. • Good option but still dependent on timing • Efforts within Trilateral group and with SIPO and KIPO are good initial endeavors

5. Work Sharing Benefits • Improved quality • Search exchanges with other offices identified search gaps • Also identified some Japanese-only references with no English equivalent or abstract • Additional benefit can stem from providing access to search tools and dossiers of other patent offices • Examiner access to search queries essential to confidence of quality of the search

6. Benefits • Increase the throughput of applications • Reduce the backlog • BUT only if there is some efficiency gain from utilizing the searches • Change credit for the application if extent of search is reduced or reduce the amount of time allotted • Currently, many examiners do not really utilize the foreign search available

7. Challenges for Work Sharing Language • References and examiner's search report can be translated with machine tool • Adequate but still needs improvement • Increasingly patents and NPL published in other languages- Japanese, Chinese and Korean • Search tools are not capable of locating all of this prior art • Innovative solutions are needed

8. Challenges- Efficiency • Difficult to change credit or goals • Perception of decreasing quality • Union negotiations • Keep examiners engaged in quality • Need to realign tasks and credit

9. Challenges- Quality • PTO evaluated by applicants, public, DOC, OMB and the Hill in some similar ways • Quality • Pendency • However, confidence in quality measure is low • What does the PTO consider an error in their statistics? • How are the in-process reviews evaluated? • What is the feedback loop?

10. Challenges- Quality • Personal and professional pride in work • Adequate training and supervision- claim interpretation • Adequate feedback and corrective suggestions • Supervisors willingness to change position of examiner • Adequate searching • Interaction among examiners- in PTO and with other offices

11. Challenges - Pendency • New rules on continuations and claims • Divisionals will replace continuations • Applicants require a number of applications to cover inventions • Rejoinder policy on 5/25 will force applicant to file divisionals • Contrary to stated objective of PTO • Restriction policy increasing applications • Alternative in claims proposed rule will exacerbate filings