Colloquium on Pendency Reduction

1. Colloquium on Pendency Reduction Potential for Reform of the PCT The Range of Options Michael Kirk AIPLA

2. THE EXAMINING PATENT OFFICES OF THE WORLD ARE FACING A CRISIS THIS IS NOT JUST FROM THE EXPLOSION OF PCT INTERNATIONAL APPLICATION FILINGS, BUT ALSO FROM THE EXPLOSION OF STRICTLY DOMESTIC PATENT APPLICATION FILINGS AS WELL AIPLA

3. NUMBEROF PCT INTERNATIONAL APPLICATIONS 1978 - 2000 NUMBER OF INTERNATIONAL AIPLA

4. PCT ISA IAs SENT TO EACH ISA 1999 2000 • EPO 44713 55414 • USA 14640 17386 • JAPAN 6827 8850 • SWEDEN 4380 4040 • AUSTRALIA 1378 1886 • ROK 4 1217 • RUSSIA 526 595 • CHINA 231 573 • AUSTRIA 965 545 • SPAIN 356 440 TOTAL 74020 90946 AIPLA

5. NUMBEROF DEMANDS RECEIVED 1985 - 2000 AIPLA

6. PCT I.P.E.A. I.P.E.R.s REQUESTED 1999 2000 • EPO 30801 37427 • USA 14218 16389 • JAPAN 3283 4401 • SWEDEN 3420 3007 • AUSTRALIA 1126 1372 • REP.OF KOREA 4 346 • RUSSIA 244 342 • CHINA 186 244 • AUSTRIA 302 418 TOTAL 53284 64243 AIPLA

7. AIPLA

8. USPTO FEES • Diverted Rescinded Not Available • 1992 $ 8.1 M • 1993 $ 12.3 M • 1994 $ 14.7 M • 1995 $ 24.7 M • 1996 $ 28.6 M • 1997 $ 53.7 M • 1998 $ 92.0 M • 1999 $ 72.0 M $ 142.0 M • 2000 $ 3.0 M $ 113.0 M • 2001 $ 113.0 M • 2002 (est.) $ 60.0 M • TOTAL $ 737.1 M AIPLA

9. THE USPTO ESTIMATED IN ITS CORPORATE PLAN IN APRIL 2001 THAT EVEN IF RECEIVED ALL OF ITS FEE REVENUE IN FY 2003 – FY 2006, AVERAGE PENDENCY WILL REACH 38.6 MONTHS IN FY 2006THE USPTO WILL BE DENIED NEARLY $60 MILLION OF FEE REVENUE IN FY 2002 AND HAS HAD TO DEVELOP ITS FY 2003 BUDGET WITHOUT POLITICAL LEADERSHIP THAT UNDER SECRETARY – DESIGNATE ROGAN WILL PROVIDE IF THE AVERAGE PENDENCY REACHES OR EXCEEDS 38.6 M0NTHS, PENDENCY IN THE SEMICONDUCTOR, TELECOMMUNICATION, AND DATA PROCESSING FIELDS MAY REACH OR EXCEED FIVE YEARS AIPLA

10. WE CANNOT WAIT FOR THE PCT REFORMS OR SUBSTANTIVE PATENT LAW HARMONIZATION TO BE COMPLETED TO ADDRESS THIS CRISIS – PATENT SYSTEMS MAY COLLAPSE UNDER THE WORKLOADWE SHOULD TAKE ADVANTAGE OF WHAT THE PCT OFFERS US TODAY THE PROPOSAL THAT WILL BE DESCRIBED IS BASED ON THE SITUATION IN THE USPTO, BUT IT MAY WELL HAVE APPLICATION ELSEWHERE. AIPLA

11. WHILE IT IS RECOGNIZED THAT HAVING TWO COMPLETE SEARCHES FROM DIFFERENT ISAs CAN STRENGTHEN ANY ULTIMATE PATENT, CAN WE AFFORD THIS LUXURY?AN ARGUABLY STRONGER PATENT ISSUED YEARS AFTER THE COMMERCIAL LIFE OF THE PRODUCT IT PROTECTS HAS VERY LIMITED VALUEIT IS TIME TO BEGIN TO TAKE ADVANTAGE NOW OF WHAT THE PCT OFFERS TODAY, WHILE THE LONGER TERM REFORMS AND PATENT LAW HARMONIZATION ARE BEING STUDIED AND DEVELOPED AIPLA

12. THE PCT PROVIDES MEMBER STATES WITH AN: INTERNATIONAL SEARCH REPORT INTERNATIONAL PRELIMINARY EXAMINATION REPORTBUT THESE ARE NOT USED TO THEIR FULLEST POTENTIAL BY THE USPTO, BOTH THOSE PREPARED BY THE USPTO AS WELL AS THOSE PREPARED BY OTHER ISAs AND IPEAs AIPLA

13. IN THE USPTO -IN EXAMINING PCT APPLICATIONS IN THE NATIONAL STAGE, EXAMINERS TREAT AN ISR PREPARED BY ANOTHER PCT AUTHORITY THE SAME AS AN IDS SUBMITTED BY AN APPLICANTEXAMINERS ARE REQUIRED TO CONSIDER ISRs AND IPERs WHICH THEY HAVE PREPARED, BUT THEY ARE NOT REQUIRED TO RELY UPON SUCH WORK AIPLA

14. THE USPTO SHOULD WORK WITH OTHER ISAs TO ENSURE THE PRODUCTION OF INTERNATIONAL SEARCH REPORTS THAT COVER THE IDIOSYNCRASIES OF US AND OTHER NATIONAL LAWS- -FIRST-TO-INVENT/FIRST-TO-FILE -WHOLE CONTENTS FOR NOVELTY ONLY -GRACE PERIOD -DIFFERENCES IN TERRITORIALITYTHE GOAL WOULD BE AN ISR THAT COULD BE USED IN ALL OFFICES, BUT ESPECIALLY THE USPTO, WITHOUT THE NEED TO AUGMENT IT AIPLA

15. THE USPTO SHOULD SUBJECT THE ISRs AND IPERs PREPARED BY US EXAMINERS TO THE SAME QUALITY CONTROL THAT ALLOWED PATENT APPLICATIONS RECEIVEIT SHOULD ALSO SUBJECT THE ISRs AND IPERs FROM OTHER AUTHORITIES TO SIMILAR QUALITY CONTROL TO DETERMINE WHICH AUTHORITIES PRODUCE ISRs AND IPERs THAT CAN BE RELIED UPON AIPLA

16. REQUIRE US EXAMINERS TO USE AN ISR PREPARED BY A US EXAMINER IN LIEU OF A SECOND INDEPENDENT SEARCHREQUIRE US EXAMINERS TO USE SUCH ISRs FROM OTHER SEARCH AUTHORITIES WHICH HAVE BEEN FOUND TO PRODUCE ISRs OF COMPARABLE QUALITY TO THOSE PRODUCED BY THE USPTO-- -WITH THE EXCEPTION THAT A SUPPLEMENTAL SEARCH WOULD BE PERMITTED WHERE AN EXAMINER KNOWS OF A BETTER REFERENCE AIPLA

17. FOR PCT APPLICATIONS ENTERING THE NATIONAL STAGE WITH AN IPER PREPARED BY A US EXAMINER- -WHERE THERE HAS BEEN NO RESPONSE TO THE IPER, MANDATE THE USE OF THE IPER AS THE FIRST OFFICE ACTION -WHERE THE APPLICANT HAS REPLIED TO THE IPER AND/OR HAS SUBMITTED NEW OR AMENDED CLAIMS, PERMIT THE EXAMINER TO MAKE A SUPPLEMENTAL SEARCH (SIMILAR TO A SEARCH FOLLOWING A FIRST OFFICE ACTION) AND NORMALLY REQUIRE THE ACTION TO BE A FINAL OFFICE ACTION AIPLA

18. FOR PCT APPLICATIONS ENTERING THE NATIONAL STAGE WITH AN IPER PREPARED BY ANOTHER IPEA FOUND TO PRODUCE IPERs COMPARABLE TO THOSE COMING FROM THE USPTO- -WHERE THERE HAS BEEN NO RESPONSE TO THE IPER, MANDATE THE USE OF THE IPER AS THE FIRST OFFICE ACTION -WHERE THE APPLICANT HAS REPLIED TO THE IPER AND/OR HAS SUBMITTED NEW OR AMENDED CLAIMS, PERMIT THE EXAMINER TO MAKE A SUPPLEMENTAL SEARCH (SIMILAR TO A SEARCH FOLLOWING A FIRST OFFICE ACTION) AND NORMALLY REQUIRE THE ACTION TO BE A FINAL OFFICE ACTION AIPLA

19. AMEND THE RULES IMPLEMENTING EX PARTE REEXAMINATION FOR ANY PATENTS ISSUED THROUGH THE PROCEDURES OUTLINED ABOVE TO ELIMINATE ANY FEE FOR A THIRD PARTY REQUESTER (“DIRECTOR’S INITIATIVE” - 35 USC 303 (a))THE THRESHHOLD REQUIREMENT THAT ANY REQUEST PRESENT A “SUBSTANTIAL NEW QUESTION OF PATENTABILITY” WOULD BE RELIED UPON TO PROTECT AGAINST ANY POTENTIAL ABUSE AIPLA

20. THE CHALLENGETHE FOREGOING PROPOSAL IS INTENDED AS ONE SUGGESTION TO ENCOURAGE OTHERS TO REFLECT ON THE PENDENCY CRISIS WE FACEIT IS RECOGNIZED THAT EVERYONE ATTENDING THE COLLOQUIUM WILL BE ABLE TO POINT OUT DEFICIENCIES IN THIS PROPOSALTHE CHALLENGE, HOWEVER, IS TO COME FORWARD WITH PRACTICAL IDEAS WHICH WILL WORK AND WHICH WILL EFFECTIVELY ADDRESS THE CRISIS WE FACE AIPLA

21. AIPLA