USPTO Pilot Program for Outsourcing Patent Cooperation Treaty Searches

The United States Patent and Trademark Office (USPTO) recently announced that it had awarded contracts under its Patent Cooperation Treaty (PCT) search pilot program to Landon IP Inc, and IP Data Miner Inc. According to the USPTO's news release, the pilot program will determine "whether searches by commercial entities can maintain the accuracy and quality standards for searches conducted by the USPTO during the patent examination process". The goal is to help the USPTO find an effective solution to deal with its patent examination backlog. The PCT is an international agreement to which 128 countries are members. The Treaty simplifies the patent process and makes it possible for an individual to seek patent protection in a number of the member countries simultaneously by filing one international application. The applications are then subject to an international search by an International Searching Authority (ISA) and may later be subject to examination by an International Preliminary Examination Authority (IPEA). In the search conducted by the ISA, the organization seeks out international publications that might affect the patentability of the claimed invention. The ISA's results are then published in an "international search report". According to a letter posted on the USPTO web site by the Acting Commissioner for Patents, the office – which is a designated ISA and an IPEA – received over 45,000 PCT applications in fiscal year 2004 and, of these, it was selected as the ISA or IPEA in over 25,000 applications. This workload is in addition to 350,000 regularly filed patent applications the USPTO received in the same period. According to the Commissioner's letter, the USPTO is also considering entering into outsourcing agreements with other intellectual property offices that currently serve as an ISA and IPEA. On a pilot basis, these offices would perform the search and examination functions currently performed by the USPTO in its capacity as an ISA and IPEA. The Canadian Patent Office (CIPO) became an ISA and IPEA in July, 2004. Like the USPTO, CIPO is currently overwhelmed with patent applications and is looking to hire and train new patent examiners to deal with its examination backlog. For a copy of the USPTO news release, visit: http://www.uspto.gov/web/offices/com/speeches/05-48.htm For a copy of the letter from the Acting Commissioner for Patents, see: http://makeashorterlink.com/?G17112AEB Summary by: Lenni Carreiro