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Edit: res-A.php

<!DOCTYPE HTML PUBLIC "-//SoftQuad Software//DTD HoTMetaL PRO 6.0::19990601::extensions to HTML 4.0//EN" "hmpro6.dtd">
<HTML> 
 <HEAD> 
	 <TITLE>Proposed resolution relating to entry into the US national
		stage</TITLE> 
 </HEAD> 
 <BODY> 
	 Proposed resolution relating to entry into the US national
		stage 
	 Patent Cooperation Treaty Issues Committee of AIPLA 
	 Here is a proposed resolution for consideration by the
		Committee.<HR> 
	 RESOLVED, that the American Intellectual Property Law Association
		supports, in principle, the use of the Patent Cooperation Treaty, and supports
		USPTO's bringing the quality of PCT processing to world-class level; 
	 Specifically, AIPLA supports USPTO's processing of papers for entry into
		the US national stage at least as promptly as USPTO processes the filing of
		ordinary domestic (111(a)) patent applications. <HR> 
	 Past action: 
	 None directly on point.<HR> 
	 Discussion: 
	 An e-filed domestic US patent application will often receive its
		official Filing Receipt (or Notice of Missing Parts) within as little as a week
		after the filing of the patent application. A paper-filed domestic US patent
		application often takes longer to receive its official Filing Receipt (or
		Notice of Missing Parts) but still this work usually gets done within three
		weeks of filing. 
	 In contrast, in recent years it has routinely taken more than a year for
		USPTO to take up national-stage papers (also called "371 papers") and it has
		often taken more than eighteen months for USPTO to mail an official Filing
		Receipt for such papers. 
	 In recent months, USPTO says it has been "attacking the problem from
		both ends", with some USPTO employees trying to process the national-stage
		papers at the tail of the backlog, and with other USPTO employees trying to
		process newly filed national-stage papers. 
	 Practitioners have anecdotally reported occasional national-stage entry
		filings in recent times in which the official Filing Receipt has been received
		about two months after e-filing of the national-stage papers. 
	 Why we care how long this takes. In response to questions about
		the extremely slow processing of national-stage filings, USPTO personnel have
		pointed out that national-stage cases are docketed to Examiners based upon the
		"371 completion" date, not based upon the date that a Filing Receipt is mailed.
		This means that if a particular Examiner's backlog was, say, twenty months,
		then a delay in national-stage processing of eighteen months is not a problem,
		because the Examiner would not have examined the case until the twentieth month
		in any event. 
	 There are at least three reasons why this is not really a good answer to
		the problem. 
	 Rule 496 cases. USPTO rules provide that when an applicant enters
		the national stage presenting only claims that USPTO had already found
		patentable in a Written Opinion or International Preliminary Report on
		Patentability, USPTO is required to advance such applications "out of turn" for
		examination. (<A
		HREF="http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_496.htm"
		TARGET="new">37 CFR section 1.496</A>, last sentence.) Such "out of turn"
		examination makes perfect sense. 
	 There are several distinct reasons why it is important to move Rule 496
		cases along without delay. Some cases qualify for Rule 496 treatment because
		IPEA/US wrote an IPRP that was favorable. When this happens, the USPTO Examiner
		who wrote the IPRP and found all claims patentable ought to be given the
		national-stage case while it is still fresh in the Examiner's mind. This
		permits the most efficient use of work previously carried out within the USPTO.
		Another reason is that if a case has been found patentable in the international
		stage, it is smart to get it into the hands of the national-stage Examiner so
		that the case can be allowed in the national stage, thereby reducing pendency.
		Finally, if and when ISA/US resumes having the search and examination carried
		out by USPTO Examiners, it will again be important to get the national-stage
		into the hands of the Examiner as soon as possible after the Examiner has
		written a favorable ISR/WO. 
	 But when USPTO processing of national-stage papers takes months or even
		more than a year, thiis eviscerates the "out of turn" requirement of Rule 496.
		By the time a year goes by, the Examiner who wrote the IPRP will likely have
		forgotten all about the case, or may have been promoted out of the Examining
		Corps or may have retired from the USPTO. 
	 Missing and dead inventors. If USPTO looks at an oath or
		declaration and finds it wanting for some reason (e.g. an interlinated
		correction that was not initialed and dated) and informs the filer promptly,
		then it is an easy matter to go back to the inventors to get a new oath or
		declaration signed. If, on the other hand, USPTO does not get around to telling
		the filer about some problem with the oath or declaration until a year or a
		year and a half later, the inventor may well have disappeared or died. 
	 A similar problem presents itself if a Rule 47 petition has been filed
		(which is of course supported by a declaration detailing the efforts that were
		undertaken to try to obtain the signature of the unwilling inventor). If USPTO
		takes a year or a year and a half to get around to telling the filer that there
		is something wrong with that declaration, it may be difficult or impossible to
		remedy the defect. The person with personal knowledge of the efforts that were
		undertaken may have died or disappeared. 
	 Fourteen months. Recall that the calculation for patent term
		adjustment takes as its goal that a first Office Action be mailed within
		fourteen months. If USPTO were some day to reach this fourteen-month goal, then
		delays in national-stage processing beyond fourteen months would disserve this
		goal. 
	 Low-backlog art units. There are art units within USPTO which,
		for one reason or another, happen to have very low backlogs. A national-stage
		case destined for such an art unit ought to get released to the Examining Corps
		promptly enough to permit the art unit to examine the case in its own regular
		course of work. 
	 Dave Kappos, Undersecretary of Commerce and Director of the USPTO,
		recently said: 
	 <BLOCKQUOTE>We are also focused on bringing the quality of PCT processing
		to world-class level. </BLOCKQUOTE> 
	 The time is right for AIPLA to offer its encouragement to USPTO to
		indeed bring the quality of PCT processing to world-class level, and one of the
		steps toward this focus is to process national-stage papers at least as timely
		as the processing of domestic patent applications. </BODY>
</HTML>

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Edit: res-A.php

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