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Edit: res-C.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 certification by RO/US of more
		International Searching Authorities</TITLE> 
 </HEAD> 
 <BODY> 
	 Proposed resolution relating to certification by RO/US of more
		International Searching Authorities 
	 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, and 
	 Specifically, AIPLA further supports USPTO's certification of as many
		International Searching Authorities and International Preliminary Examining
		Authorities as possible for US filers of PCT applications. AIPLA further
		supports USPTO permitting any ISA or IPEA to establish such limitations as may
		facilitate willingness to be certified by USPTO for such services.<HR> 
	 Past action: 
	 In Resolution 702-10, adopted by the Board on October 29, 2005, AIPLA
		urged USPTO to: 
	 <BLOCKQUOTE>mak[e] available to PCT applicants eligible to file in the
		USPTO as Receiving Office as many International Searching Authorities and as
		many International [Preliminary] Examining Authorities as agree to search and
		examine PCT applications in the English language.</BLOCKQUOTE><HR> 
	 Discussion: 
	 For many years, US filers had but two choices as their International
		Searching Authority -- the ISA/US (the USPTO), and ISA/EP (the European Patent
		Office). 
	 Within a few months after the October 29, 2005 Board Resolution, USPTO
		acted, certifying the Korean Intellectual Property Office ("KIPO") as an ISA
		and IPEA for US PCT filers. About a year later, USPTO certified IP Australia as
		an ISA and IPEA for US PCT filers. 
	 For US PCT applicants, these certifications have been an unalloyed
		success. Filers who were previously dissatisfied with the extreme tardiness of
		USPTO doing its search work were able to choose whether to switch their work to
		Korea where it would get done faster and cheaper. 
	 More recently, USPTO has stopped using its own Examining Corps to carry
		out PCT searches, and instead now outsources all such work to two government
		contractors. Filers who want their searches carried out by an actual patent
		office rather than by an outside contractor can likewise consider whether to
		send their work to Korea. 
	 EPO has recently announced a change in how it will handle a patent
		application that is an entry into the EP regional stage from a PCT application,
		in the special case where the ISA or IPEA was the European Patent Office. Under
		this change, there is a very short time period during which the applicant must
		respond to all issues raised by ISA/EP or IPEA/EP. The abandonment that would
		follow if the applicant were to fail to satisfy this very short time period may
		prompt some PCT applicants to wish to choose a searching authority (or
		preliminary examining authority) that is not the European Patent Office. This
		highlights the importance of their being more searching authority options for
		PCT filers. 
	 The "drinking from a fire hose" problem. When ISA/KR agreed to
		become an ISA for RO/US, it was quickly inundated with US PCT applications
		requiring search and examination. By now ISA/KR has managed to staff up to
		accommodate the flow of work, and has adjusted its search fee to more closely
		track its cost of handling such work. 
	 It has been informally reported that at least one ISA has been reluctant
		to agree to be an ISA for RO/US out of a concern that it would find itself
		"drinking from a fire hose" and inundated with work. 
	 ISA/AU has attempted to avoid the firehose problem by declaring itself
		not to be competent to search certain technologies that fall within examining
		units at IP Australia that already have plenty of work to do. In this way
		ISA/AU is trying to make sure that any PCT cases that come to it from RO/US
		will be limited to cases that would go to examining units that are not already
		overburdened. 
	 As another example of a Searching Authority trying to minimize the risk
		of being inundated with work, the Nordic Patent Institute (SISA/XN) has stated
		that it will only accept 500 supplemental international searches per year.
		Similarly the Swedish Patent and Registration Office has set forth a limitation
		that it will "notify the International Bureau if demand for supplementary
		international search exceeds available resources", thereby establishing a
		mechanism for preventing inundation. 
	 To the extent that any Searching Authority may in the past have been
		reluctant to permit itself to be certified by RO/US, it is hoped that USPTO
		could encourage such Searching Authority to establish such limitations as would
		enable the Searching Authority to provide such services. 
	 What do other Receiving Offices do? The Receiving Office of the
		Indian Patent Office, to give one example, has certified AU (Australia), AT
		(Austria), EP (EPO), CN (China), SE (Sweden), and US (USPTO) as Searching
		Authorities and Examining Authorities. 
	 What ISAs that RO/US has not certified might possibly be
		certified? ISA/AT, ISA/CA (Canada), ISA/CN (China), ISA/FI (Finland),
		ISA/RU (Russia), ISA/SE, and ISA/XN are each willing to search applications
		filed in English. Each of these ISAs is thus a candidate for certification by
		RO/US. 
	 What might such searches cost? It is noted that ISA/CN charges a
		search fee of $280. ISA/AT charges $257. ISA/RU charges $411. Each of these
		search fees is much cheaper than the prices charged by the searching
		authorities presently available to US filers. 
	 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 permit US PCT filers to choose from as broad a
		range of International Searching Authorities as possible. </BODY>
</HTML>

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Edit: res-C.php

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