Patent Law Practice Center

USPTO and JPO Announce Patent Cooperation Treaty Agreement

The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) have recently announced an implementation agreement under which the JPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO as the Receiving Office, under the Patent Cooperation Treaty (PCT). The USPTO and JPO are two of the intellectual property offices authorized to conduct international searches and international preliminary examinations in the PCT system.

The PCT is an international agreement that simplifies the filing of patent applications in its contracting countries. A PCT application has the effect of a national application for a patent in any of the designated PCT countries. International applicants receive an International Search Report and an International Preliminary Report on Patentability to help them determine if an application meets basic patentability criteria before committing to the high cost of translating and entering the national stage in one or more PCT countries.

The agreement took effect on July 1, 2015.  The agreement is intended to end on June 30, 2018, but as is typical with these types of bilateral agreements, the USPTO says that it may be continued by mutual written consent.

The addition of JPO as an available ISA and IPEA will allow applicants additional flexibility in choosing an international authority based on the technology disclosed in the international application.

“This latest collaboration between USPTO and JPO exemplifies the cooperative spirit between our Offices and benefits applicants by providing an additional option for examination of their international applications directed to green technology,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee.

Under the agreement, JPO may act as an available searching authority and preliminary examining authority, provided that:

1. The applications are submitted in the English language.
2. The claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes.
3. The JPO has not received more than 5,000 international applications from the USPTO during the three-year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years.
4. The JPO is chosen as a competent authority by the applicants.

Further details on the use of JPO as an ISA/IPEA for applications filed in the US receiving office, including the International Patent Classification classes which define the field of green technology according to this agreement, will be made available on the USPTO Web site.

While 5,000 international applications seems like a small number, the USPTO has in recent years overestimated the popularity of this type of program. Thus, bandwidth to participate shouldn’t be an issue, at least if past history is any guide.

USPTO Budget Reductions Halt Fee-Based Prioritized Examination (Track I) And Other Programs

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor sent in this alert discussing the impact the enactmet of the Full-Year Continuing Appropriations Act, 2011 will have on the USPTO’s spending authority for fiscal year 2011.

On April 22, 2011, USPTO Director David J. Kappos announced the impact of the budget reductions embodied in the fiscal year 2011 budget that finally was enacted on April 15, 2011. (Fiscal year 2011 runs through September 30, 2011.) The budget gives the USPTO the authority to spend only $2.09 billion, which is about $100 million less than its projected fee collections.

As a result of this significant fee diversion, the USPTO has decided not to implement fee-based prioritized examination (Track I), which was going to be available as of May 4, 2011.

Applicants interested in prioritized examination should consider whether their applications qualify for other programs, such as the Accelerated Examination,Patent Prosecution Highway, or Green Technology programs. An overview of these programs can be found on Foley’s PharmaPatentsBlog. (more…)