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The latest U.S. Patent and Trademark Office innovation is a deal to work with the European Patent Office on a joint patent classification system aligned with global standards. In an Oct. 22 joint announcement, the two agencies said they plan to create a patent classification system aligned with the World Intellectual Property Organization’s International Patent Classification system. The agencies also announced that, while they will base the joint system on the European Patent Office (EPO) standard, it will also incorporate the best practices of both offices. The two agencies developed the project “in view of the significant benefit to stakeholders of developing a transparent and harmonized approach to a global classification system for patent documents [and] in order to make the search process more effective,” stated PTO director David Kappos and EPO president Benoît Battistelli. The joint release also stated that a unified classification system would help the two agencies “move closer to eliminating the unnecessary duplication of work between the two offices, thus promoting more efficient examinations, while also enhancing patent examination quality.” Patent agencies search for “prior art” — published information about the subject matter of a claimed invention, including issued patents — within the classification a patent application falls into and in surrounding classifications. Examples of PTO classes include nanotechnology and data processing. It makes sense for the agencies to use each other’s work to gain efficiencies, as long as patent examination isn’t delayed in one country until it’s conducted in another country, said Courtenay Brinckerhoff, vice chairwoman of Foley & Lardner‘s chemical, biotechnology and pharmaceutical practice.

“The problem is the efficiency gains to be made are going to be limited by how similar the laws are that are being applied in these countries,” Brinckerhoff said. Brinckerhoff said a joint EPO and PTO classification system is more likely to be useful when determining a patent’s novelty or anticipation by previous invention than for obviousness, which has a different standard in Europe called inventive step. Since the PTO and EPO are already involved in work-sharing arrangements, “the idea of having a consistent classification system is a good one,” said Q. Todd Dickinson, executive director of the American Intellectual Property Law Association. “It’s a very important aspect of quality,” Dickinson said. “The more efficient the classification system, the better the search. [But a] key question is how long it might take and how much it might cost. Those are key issues. In concept, it’s a very good idea; we await the details.” The PTO has developed numerous work-sharing agreements with foreign patent agencies over the past couple of years. The agreements generally set up a “Patent Prosecution Highway,” which allows applicants who obtain a ruling on at least one claim in a patent application submitted to one participating agency to request that other participating agencies fast-track examination of the patent. Last November, the PTO, EPO and the Japan Patent Office each agreed to give the two other offices access to its work product on applications filed under the Patent Cooperation Treaty. The treaty allows applicants to file a single application to obtain a patent filing date in numerous countries, but to delay individual country applications. 

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