As I wrote earlier this week, Director Kappos is championing international worksharing as a key mechanism for addressing the growing workload facing patent offices around the world. To make worksharing work, the Office of First Filing (OFF) has to examine the application first. This means that patent offices participating in international worksharing programs will be encouraged to give priority to applications for which they are the OFF—usually applications filed by domestic applicants, with no priority claim or a priority claim to a domestic provisional application.

The Basics of Worksharing

As worksharing has been described, the Office of First Filing (OFF) will make its search and examination reports available to other patent offices (the Offices of Second Filing, or OSFs). According to its supporters, worksharing will result in enhanced examination efficiencies because the OSFs will be able to reutilize the OFF’s work when they examine the same (or corresponding) application.

Prioritizing Examination of Domestic Applications

When the USPTO proposed to “sidetrack” foreign-origin applications as part of its proposed Enhanced Examination Timing Control Initiative, it stated:

[M]ajor patent filing jurisdictions like the Japanese and European patent office have already adopted office-driven systems in which they address first the applications for which they are the office of first filing.

At the time, I was not able to uncover any details on the cited JPO and EPO programs, but I have since learned tidbits from various sources. A document released by the USPTO provides more concrete information, which I summarize below.

The EPO’s PACE Program

The EPO’s Programme for Accelerated Prosecution of European Patent (PACE) has been in effect since 1995. PACE is an office-initiated program for all applications filed in the EPO without a priority claim, and encompasses about 20% of EPO filings. PACE focuses on accelerating the search report (only), and aims to provide a search report within six months of the EPO filing date.

The JPO’s FIRST Progam

The JPO launched its Fast Information Release Strategy (FIRST) program in 2008. JP-FIRST is an office-initiated program and includes all applications that are first filed in the JPO and then filed in the EPO and/or USPTO, as long as a request for examination is filed within two years of the JPO filing date. The goal of JP-FIRST is to provide a search and examination report within 30 months of the JPO filing date.

None of these programs directly delay examination of foreign-origin programs, and none come close to the USPTO’s proposal to refuse to examine a foreign-origin application until the OFF search and examination report is available. Indeed, while the EPO is launching a Utilisation Implementation Project (UIP) in January 2011, it has revealed no intent to delay examination to promote worksharing. Rather, under the UIP, applicants will be required to submit any OFF search reports that are available, but the EPO will not delay (or accelerate) examination based on a UIP submission.

Kindergarten Lessons for Patent Examination?

While PACE and JP-FIRST strike me as protectionist programs developed to prioritize examination of domestic applications (and perhaps protect or promote domestic industries), I am intrigued by their use as vehicles to enahnce international worksharing. Perhaps the EPO, JPO, and USPTO are learning what we teach our children in kindergarten: Being selfish won’t get you very far—you have to learn to SHARE.