In a recent blog post, Director Kappos wrote about USPTO efforts to improve its performance as a PCT Receiving Office (RO), International Searching Authority (ISA), and International Preliminary Examining Authority (IPEA). The USPTO has improved some statistical measures of its performance, such as different processing times, but still falls short on the timeliness and quality of Search Reports and Written Opinions. While Director Kappos promises more oversight of the contractors who perform these tasks, it seems like the obvious solution to many of the problems would be to return the PCT search and examination functions to U.S. examiners.

Outsourcing PCT Examination

It was only last year that I realized that the USPTO outsources its PCT search and examination functions to contractors. It looks like the USPTO started an outsourced PCT search pilot program in 2005 and awarded outsourced PCT search and examination contracts in 2006. I was not aware of these changes at the USPTO because I usually prefer to use the EPO as the ISA (to obtain alternative search results when there is a parallel U.S. application), or suggest a less expensive office (such as KIPO) when the PCT budget is very tight.

Losing Examination Efficiencies

Early in my career, the EPO was not an ISA option for biotechnology applications, so we did use the USPTO. Back then, U.S. examiners perfomed the PCT search and examination functions. And, more often then not, the same U.S. examiner handled the application at both the PCT and U.S. national stages. This obviously created examination efficiencies, since the U.S. examiner already was familar with the application by the time it came up for national examination. The U.S. examiner also would have confidence in the PCT Search Report and Written Opinion, especially if he or she had done the work.

This continuity between the PCT and U.S. national stages has been lost with the outsourcing of USPTO PCT functions. Even Director Kappos recongizes the need to improve reliance on PCT work product during the national phase.

I find it ironic that even as the USPTO is focusing on international worksharing, it doesn't even give full faith and credit to the PCT work that it ultimately is responsible for. The contrast with the EPO also is striking. Instead of begrudging its PCT obligations, the EPO is elevating their importance, requiring applicants to respond during the national stage to issues raised by the EPO ISA during the PCT stage.

The USPTO's Efforts to Improve Its PCT Functions

As long as the USPTO is committed to its PCT outsourcing program, its options for improving the PCT will be limited by its ability to enhance training and oversight of its contractors. The USPTO also plans to work with EPO and JPO "to develop metrics to understand the extent of re-use and ways to enhance re-use potential in the future."

Director Kappos also announced a collaborative program with EPO and KIPO:

[T]he USPTO, EPO and KIPO have recently concluded a Collaborative International Search and Examination pilot in which examiners from our Offices worked together to produce international search reports and written opinions. This pilot tested the feasibility of collaborative international searches and provided a general assessment of quality. A second larger phase of this pilot is planned for 2011 to build upon the lessons learned from the first phase and to provide a quantitative assessment of collaborative international search and examination.

It will be interesting to see if the collaborative work product is of a higher quality than work done by any single ISA, and whether collaborative results have a higher re-utilization rate during the national stage. If so, the next challenge would be ensuring that international patent offices have the resources (e.g., qualified examiners) to support a long-term collaborative approach and realize real improvements to the PCT.