Report on the PPH Pilot Program between the CIPO and the USPTO for the trial period of January 28, 2008 to January 31, 2009 – 5 of 7
5.0 CIPO Examiner Feedback
The feedback from examiners was generally positive as most of the expected benefits for examiners were realized. Seventy-six percent of examiners made positive comments about the PPH, 9% of the examiners made negative comments, and 15% of examiners were indifferent.
Comments made by examiners in their PPH evaluation form include the following:
- Highlights the fact that the claims could be already in condition to allow them.
- Had the claims not been amended to correspond with the US allowed claims, I would have had to cite prior art on the claims as originally filed. Still had to write report, still took same amount of time.
6.0 Utilizing the PPH to Improve the Examination TAT for each Division
The Patent Branch (PB) will explore the extent to which the PPH pilot program can be used to improve the examination turn-around time (TAT) in each division.
Each division has established its own service standard based upon 80% of applications with a request for examination will be waiting for a first substantive examination action no longer than X months. For example, in the Mechanical Division the target is 18 months.
Currently, most of the requests to participate in the PPH correspond to those applications that have a TAT better than the current number of months. If this trend were to continue, the divisions would not reduce their overall TAT.
PB will attempt to increase the benefits from the PPH by identifying and actively encouraging clients who potentially qualify, and whose application has an outstanding request for examination (RE) outside the Client Service Standard, to participate in the PPH. The clients will be informed about the PPH via a letter campaign so that the office makes a direct communication with the client. The campaign will begin in July 2009.
7.0 Measurement of Expected Benefits
The PPH pilot focused on validating the concept of work sharing between patent offices.
The PPH pilot aimed to:
- Measure the interest of applicants,
- Measure improvements in examination efficiency and quality, and
- Measure the cost savings per PPH application.
Interest of applicants
In comparison to other international PPH pilot programs, the participation rate at CIPO was very high. The interest from Canadian applicants at the USPTO and CIPO was moderate to low as the USPTO only received six requests and CIPO received 73 requests.
The PPH has resulted in a FA allowance rate of 42.5% and could be as high as 61%. This results in 1.6 to 1.2 office actions per disposal. While it would appear that there is an efficiency gain for examination as a result of the PPH program, there has been insufficient volume of PPH requests to isolate certain variables and determine conclusively that the overall examination efficiency has been improved.
Cost savings to CIPO
The cost savings for CIPO are difficult to isolate and, considering the relatively low volume of PPH requests as a percentage of CIPO's overall inventory, the overall cost savings are modest. On the other hand, no significant added costs have been incurred to provide the service.