This is the English language version of a press release by the USPTO and the ILPO.
IL and USA Implement Patent Cooperation Arrangement
The Israel Patent Office (ILPO) and the United States Patent and Trademark Office (USPTO) have entered into an arrangement in which ILPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for certain international applications filed with the USPTO as a Receiving Office provided that the applications are submitted in the English language and the ILPO is chosen as a competent authority by the applicants of said applications.
The following restrictions apply: The ILPO will not act as an ISA for: (1) more than 75 applications per fiscal quarter; and (2) applications with one or more claims directed to the field of business methods as determined through classification in G06Q of the International Patent Classification.
For cited documents in the International Search Report, the ILPO intends to furnish the applicants with copies of the documents upon request and on payment. The arrangement goes into effect on October 1, 2014.
This arrangement will allow US PCT applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examination of international applications.
By entering this arrangement, the USPTO validates the quality of search provided by the ILPO and enables applicants using the ILPO as their ISA with services as are available when selecting other ISAs.
Using the ILPO as the ISA/IPEA will also allow applicants to avail themselves of procedural advantages available under the Patent Prosecution Highway (PPH) program. Under the PPH agreement between the ILPO and the USPTO, a favorable opinion from the ILPO acting as an ISA/IPEA on novelty, inventive step, and industrial applicability of a PCT application will permit an applicant to expedite prosecution of a corresponding U.S. or IL application.
Asa Kling Director of the Israel Patent Office: “This is a significant stepping-stone for the ILPO. We look forward to implementing this arrangement and see it as an important enhancement in the long-standing bilateral cooperation between our offices. I am sure US applicants will appreciate the value in having another quality and time efficient option for designation of PCT ISA/IPEA operations” said, in his remarks.
Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO: “The collaboration between the USPTO and ILPO will benefit US patent applicants under the Patent Cooperation Treaty as it will provide additional search and preliminary examination options at a competitive cost.”
MIchael Factor, opinionated Blogger: Israeli applicants have long been able to have their PCT applications examined by the USPTO. Now that the ILPO is an authorized International Search Authority, this development seems sensible and fair. In order to become an International Search Authority, the ILPO had to employ at least 100 examiners. There is not enough work for them to do as evidenced by the shrinking workload and shorter pendencies in the 2013 Report, and we are now receiving Notices Prior to Examination for cases first filed in Israel within 9 or 10 months of filing, before the Paris Deadline. Searching and possibly examining some 300 applications for PCTs filed in the US seems a useful way to keep some Israeli Examiners gainfully employed. It will help the USPTO with its commitment to examine PCT applications within 16 months of priority, and in the past we have elected the USPTO as a search authority and not received the goods.
This pilot could develop in a number of directions. The USPTO has an enormous backlog and dropping examination standards. With US Examiners increasingly working from home, one can envisage Israel based examiners examining US applications – either US citizens living in Israel working remote, or the USPTO outsourcing to the Israel Patent Office. Salaries in Israel are low compared to the US, and the standard of education is high. Such a system could work out very well. Time will tell.