The USPTO’s proposed changes to the application queuing system will derail foreign-based applications in order to promote the USPTO’s worksharing goals. While domestic applicants will be able to opt into one of three examination tracks (“prioritized,” “traditional,” and “delayed”) applications that claim priority to a foreign application will have their brakes set until the foreign patent office issues a substantive examination report. The USPTO has not explained the legality of this second-class treatment of foreigners, and has not shown that temporarily taking foreign-based applications off track will benefit the U.S. examination system in the long run.
Applications “based on a prior foreign-filed application” will not be placed in the examination queue until substantive examination in the foreign application begins. In order to obtain U.S. examination, the applicant will have to file in the U.S. application a copy of any search report and the first office action from the foreign application, as well as “an appropriate reply to the foreign office action” as it may apply to the U.S. application. Once this requirement is met, foreign-based applications will be queued up for traditional examination unless a request and fee are submitted for prioritized examination.Foreign-based applications thus will face:
- Delayed examination — the U.S. application will not even be placed in queue until the foreign priority application has received a first office action and a “response” has been filed in the U.S. application. (It is not clear whether applications will be retroactively placed in queue based on their filing date, or will enter the queue at the end of the line on the date the response is filed.)
- Potential loss of Patent Term Adjustment (PTA) — the USPTO proposes to deduct from any PTA the delay associated with waiting for the first foreign office action and response.
- Increased prosecution burdens — the applicant will have to address issues raised by the foreign patent office, even if they might not have been raised by the U.S. examiner.
Worksharing On The Railroad
The USPTO believes that these provisions will promote its worksharing goals and “avoidor reduc[e] duplication of efforts” by the foreign patent office and USPTO. However, examination efficiencies will be realized only if:
- The foreign office action raises issues relevant to U.S. practice. But, many countries differ on what qualifies as prior art, and on the standards for enablement- and written description-type requirements.
- The applicant’s “response” to the foreign office action meaningfully advances U.S. prosecution. But, applicants may argue that the issues raised by the foreign patent office are irrelevant to U.S. examination.
- The U.S. examiner can expend less effort on the U.S. search and examination. But, U.S. examiners still will need to conduct a search in accordance with U.S. requirements and apply U.S. laws, rules and MPEP guidance.
Trouble On The Tracks
The USPTO needs to address the following issues that could undermine or negate the anticipated benefits of this proposal:
- The legality (vis-à-vis international treaties, such as the Paris Convention) of derailing U.S. applications that include a foreign priority claim.
- The potential impact on the U.S. patent system if applicants are discouraged from filing foreign-based applications, including the loss of USPTO revenue, the loss of USPTO status as a premiere patent office, and the long-term impact on the U.S. economy if foreign applicants “take their toys and go home.”
- The likelihood that applicants will avoid these requirements by filing U.S. provisional applications in lieu of (or in parallel with) original foreign applications, so that their U.S. applications will not need a foreign priority claim.