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With ever-increasing numbers of patent applications each year, the U.S. Patent and Trademark Office (PTO) is unable to hire itself out of a growing pendency crisis, in which the time it takes to process patent applications in key areas including software, nanotechnology and biotechnology has begun to spiral out of control. Though all users of the patent system are pleased that the PTO has implemented new quality initiatives, these have only added to the amount of time it takes to process new patent applications. Against this backdrop, the PTO recently announced the availability of the “patent prosecution highway” available for applications filed after July 3, and a new “accelerated examination” process, which became available for applications filed on or after Aug. 25. See 71 Fed. Reg. 122, page 36323 (June 26, 2006). However, the patent prosecution highway is in the testing phase and may be of limited value. Moreover, the new procedures will exact a hefty price compared to traditional methods for expediting the patent examination process; they may create unwanted limits on the scope of patent protection; and they may unacceptably increase the risk of inequitable conduct. (Although the government fee for filing a request for accelerated examination is only $130, there are numerous requirements that will necessitate high attorney fees.) In a nutshell, the primary purpose of the accelerated examination via the patent prosecution highway or otherwise is to decrease the PTO’s workload and to “improve quality” by issuing U.S. patents in a shorter period of time following an application’s filing. For years, the PTO and the Japan Patent Office (JPO) have been participating in projects aimed at decreasing each office’s workload, which in theory would “improve quality.” The European Patent Office is also participating in these projects. To understand why, it is important to understand the current tasks and procedures of each office. Both the PTO and JPO were given the task of examining patent applications, a task which includes determining whether a claim invention is new and different enough from the prior art to warrant patent protection. Before this determination could be made, the individuals in each office must perform a “search of the prior art.” Clearly, if the search of the prior art were separately and perfectly performed by individuals in each office, then one would expect that the search of the prior art from the first office to perform a search would be duplicated by the individuals in the second office. As a result, officials from each office decided that their respective office could benefit by exchanging its search results of the prior art with the other office. The benefit for the second office is twofold. First, because a search of the prior art does not have to be performed, the second office will benefit from a decreased workload. Second, if the first office has already examined and allowed the application to grant as a patent, the second office could, if assurances were made, merely rubber-stamp the application for patent, thereby benefiting the second office’s pendency numbers, i.e., in the words of the PTO, “improve quality.” PTO can’t fully benefit now Yet the current procedures in each office differ enough to prevent the PTO from benefiting enough to fully participate in this program. Indeed, the PTO orders its examiners to examine most applications on a first-filed, first-examined system. 37 C.F.R. 1.102 (2006). Even though original applications may be deferred for up to three years under certain circumstances, 37 C.F.R. 1.103(d), it appears that this procedure is rarely used. In Japan, on the other hand, the applicant can and typically does defer examination for three years after filing. As a result of the commonplace use of this deferred examination, Japanese applications are typically examined after the corresponding United States counterpart applications. As a result, unless changes were made, the PTO would not benefit from exchanging search reports nearly as much as the JPO would benefit. Indeed, the PTO recently confirmed this finding. According to one published finding, for applications first filed in Japan, the JPO could provide its search results to the PTO less than 10% of the time. Official Gazette Notices: Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office, 13 June 2006, www.uspto.gov/ web/offices/com/sol/og/2006/week24/patpilt.htm. Clearly, unless the current procedure regarding deferred examination of either office changes or other motivations are provided, the PTO would not substantially benefit from fully participating in this exchange of prior art searches.

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