On March 10, 2010, the USPTO and UKIPO (United Kingdom Intellectual Property Office) announced a commitment to develop joint action plan to assist in reducing patent
application backlogs (click Here to view the press release).
As noted in previous FoundPersuasive posts, a primary motivation of Director Kappos is to reduce the patent application backlog, having been tasked to do so by
Secretary of Commerce Gary Locke. The USPTO and the UKIPO have both committed to develop a plan to optimize reuse of work on patent applications that are filed jointly
at the USPTO and the UKIPO. Likely, art-based rejections made by one Office will be reused to the extent possible in rejections by the other.
It appears that reducing backlogs may have a significant economic benefit as well. Per the USPTO press release, a UKIPO study indicates that patent backlogs may
cost the global economy as much as $11.4 billion per year. In the press release, Director Kappos also indicated a belief that "[e]very quality patent application that
sits on the shelf represents jobs not created." Work-sharing efforts are one way to attempt to reduce the backlog. While Director Kappos stated that previous
work-sharing efforts by the USPTO have been applicant-driven, it appears that the USPTO has taken a strong interest in work-sharing between patent offices. Accordingly,
this model of work reuse may be expanded to other countries in the near future who perform quality patent examination. Canada, for instance, with its rigorous requirements
to become an Examiner and high quality, seems to be a good candidate.
The USPTO work-sharing program, if sufficiently expanded, would also have cost-saving benefits for PCT applications that will enter the national stage in multiple
particiating countries. Applicants could reuse much of the reasoning regarding why a claimed invention differs from the cited art in responding to
art-based rejections, taking into account local requirements. Such reuse should reduce the time required to respond to similar rejections in Responses filed in various
participating patent offices, thus reducing overall cost for legal services.
In summary, the work-sharing agreement between the USPTO and the UKIPO should lead to minor reductions in patent backlogs. If the program works, agreements with patent
offices of other nations may be established, further reducing backlogs. Additionally, PCT Applicants should see cost reductions commisurate with the number of copending
applications they have pending before participating patent offices.
Patent portfolio management is the practice of determining what to patent, how to proceed during the patent application drafting and prosecution process, and how
the patent is eventually used by a company. FoundPersuasive contributor and co-founder Michael Leonard has put together a PowerPoint presentation that provides a
broad overview with respect to patent portfolio management. To view the post, use the navigation menu on the side of this site under
Presentations 
Portfolio Management, or click Here.
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Examiner Interviews can be an effective tool to advance prosecution in a case without making much of the discussion of record. If performed carefully and effectively, such
Interviews can reduce the number of prosecution iterations needed to obtain a patent and significantly reduce the overall cost of prosecution. This may lead to the
mutually beneficial result of a happier client and more future work for the attorney or agent. FoundPersuasive contributor Sheetal Patel has prepared an article providing
his perspective on how to effectively prepare for, conduct and conclude Examiner interviews. To view the post, use the navigation menu on the side of this site under
Articles Examiner Interviews, or click Here.
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As noted in his previous article on FoundPersuasive, guest author David Moore stated that in Ex parte Gutta, the Board of Patent Appeals and Interferences
(“BPAI”) delivered its precedential opinion that affects examination of software-related patent applications. In particular, Ex parte Gutta signifies a new
analytical framework for patent applications where an algorithm is recited in an apparatus and article of manufacture claim. Mr. Moore argues that this new analytical
framework will have a direct bearing on patent professionals prosecuting patent applications before the USPTO, as Examiners rely on Ex parte Gutta to reject
claims as allegedly reciting non-statutory subject matter. Applicants are not without recourse, however, during the prosecution of pending applications and preparation
of new applications, as Mr. Moore discusses in his article. To view the post, use the navigation menu on the side of this site under
Articles Response to Gutta, or click Here.