USPTO’s Work Sharing Efforts: Increasing Certainty of IP Rights While Reducing Stakeholder Costs

By: Jessica Patterson

The United States Patent and Trademark Office (USPTO) established the Office of International Patent Cooperation (OIPC) in 2014 to support and improve the international patent system. The office leads efforts to assist U.S. inventors and businesses in protecting their patent rights worldwide and supports the global innovation community. The efforts of OIPC strive to improve the international patent system in two critical areas: increasing certainty of intellectual property (IP) rights and reducing costs for stakeholders.

OIPC considers work sharing to be one of the most fruitful ways to both increase certainty of IP rights and to reduce costs. Work sharing brings forth many benefits not only to the stakeholders, but also to the entire IP system, including efficiency of examination and further improving patent quality.

USPTO, through the efforts of OIPC, is engaged in a number of work sharing programs and projects. One example of this is by leveraging the foreign language skills and work of our foreign office counterparts.  In the United States, patentability hinges upon the prior art, not just in the U.S. and not just written in English, but prior art across the globe. Worldwide patent quality increases when: the public and examiners get access to the most relevant prior art, not only in their native language, but in other languages as well.  Global Dossier is one of the ways that access is available.

Global Dossier is a set of business services that provides IP stakeholders free, secure, one-stop access to the dossier information of all applications that comprise a family and that have been filed in participating IP offices. It represents a significant move towards technical harmonization by enabling the exchange of patent information between foreign IP offices, patent examiners, and the public worldwide. The IP5 Offices developed Global Dossier together, but each has its own user interface designed for their particular stakeholders.

Moreover, Global Dossier provides tremendous cost savings through new efficiencies, and leverages work sharing opportunities contributing to improved patent quality worldwide. These efficiencies can result in significant savings for U.S. innovators, which can be invested in more innovation. An example of this efficiency is the access to foreign applications in real-time without the need to go through a local agent, thus providing applicants the ability to quickly monitor their patent applications worldwide.

The Collaborative Search Pilot  (CSP) is another way that the office is engaged in work sharing. In today’s world, stakeholders generally want faster results and lower costs, along with more certainty and consistency of results for applicants. CSP was started with that in mind and is achieved through work sharing. Work sharing efforts aim to improve the information examiners have. With most of the work sharing programs and projects, IP offices are sharing information after they have completed work, for example Global Dossier. With CSP, work sharing occurs at the front end of the process, thus enabling the coordinating efforts of IP offices to provide an examination process and product that is more reliable and provides better results.

The Collaborative Search Pilot, running from November 1, 2017 through October 31, 2020, is designed to accelerate examination and provide the applicant with more comprehensive prior art by combining the search expertise of examiners at the USPTO and JPO or KIPO before issuing an office action in the patent application. Benefits of using CSP include:

• Greater consistency in examination across offices leading to more certainty of IP rights.
• Applications will be taken out of turn resulting in expedited first action on merits.
• Combined search expertise provides more comprehensive prior art.
• It’s FREE to file a petition for your application.

Global Dossier and the Collaborative Search Pilot are just two examples of work sharing efforts being done at the USPTO. You can read more about these efforts and the work being done by the Office of International Patent Cooperation here.