Quality of PCT Searches

Mark PowellDirector, Technology Center 2600

United States Patent & Trademark Office

Quality Requirements Under The PCT

PCT Rule 36.1(iv) requires that any International Searching Authority have a Quality Management System (QMS) and internal review arrangements in placeThe main features of a framework for a QMS is set forth in Chapter 21 of the International Search and Preliminary Examination Guidelines

Quality Requirements Under The PCT

The framework set forth in Chapter 21 of the Guidelines provides that a QMS should address specific areas of concern

ResourcesAdministrationQuality AssuranceFeedback ArrangementsCommunication and Guidance to Users

Quality Management System Requirements

ResourcesSufficient quantity of technically qualified staffAppropriately trained/skilled administrative support staffAppropriate equipment and facilitiesAccess to PCT minimum documentationComprehensive and up-to-date work manualsEffective training and development programSystem for monitoring and identifying resources

Quality Management System Requirements

AdministrationControl mechanisms regarding timely issuance of search and examination reportsControl mechanisms regarding fluctuations and backlogsSystem for handling complaints and taking corrective action where appropriate

Quality Management System Requirements

Quality AssuranceEffective internal quality assurance system to ensure compliance with the Search & Examination GuidelinesSystem for measuring, recording, monitoring and analyzing the performance of the QMSSystem for verifying the effectiveness of actions taken to address deficiencies and to prevent issues from recurringSystem for ensuring the continuous improvement of the established processes

Quality Management System Requirements

Feedback ArrangementsSystem to communicate the results of the internal quality assurance process to ensure that any necessary corrective action is takenSystem to provide for effective communication with WIPO and other Offices to allow for prompt feedback so that potential systemic issues can be evaluated and addressed

Quality Management System Requirements

Communication and Guidance to UsersEffective communication channels to promptly deal with inquiries and allow appropriate two-way communication between applicants and examinersGuidance and information to users on the search and examination process

USPTO PCT Quality Management SystemPCT QMS operates under the overall administrative and policy direction of the Commissioner for PatentsManagement of overall PCT operations is divided between:

Deputy Commissioner for Patent Resources and Planning (DCPRP)Deputy Commissioner for Patent Operations (DCPO)Deputy Commissioner for Patent Examination Policy (DCPEP)

Each Deputy Commissioner is involved in different aspects of the operation and/or implementation of the overall QMS

USPTO PCT QMS - Resources

Deputy Commissioner for Patent Resources and Planning

PCT Operations• Checks applications for compliance with the Treaty,

Regulations, and Administrative InstructionsOffice of Patent Resources Administration

• Establishes patent program activity targets and evaluates performance against patent program objectives to evaluate the level of resources required to carry out PCT operations at all levels

USPTO PCT QMS - Resources

Deputy Commissioner for Patent Resources and Planning – cont.

Search and Information Resources Administration• Maintains search systems and technical information sources • Ensures that PCT minimum documentation requirements are

met • Ensures effective handling of PCT applications at all stages of

search and examination

Office of Patent Classification• Provides technical support relating to the International Patent

Classification Standards and other international document- related standards

USPTO PCT QMS - Resources

Deputy Commissioner for Patent OperationsDCPO personnel monitor staff resources in an attempt to ensure timely search and examination Each Technology Center under the DCPO maintains systems to train paralegal and technical support staff on the processing of search and examination reports

USPTO PCT QMS - Resources

Deputy Commissioner for Patent Examination Policy

Office of PCT Legal Administration (OPCTLA)• Develops and provides training to USPTO

professional and technical support staffs • Regularly reviews and updates the USPTO’s Manual

of Patent Examining Procedure with respect to PCT matters

USPTO PCT QMS – Administration

Deputy Commissioner for Patent Resources and Planning

PCT Operations handles the majority of search and examination administrative responsibilities

• Processes all applications for which the USPTO serves as the International Searching Authority

• Processes Demands for International Preliminary Examination

• Mails notices and reports, and handles other administrative duties

• Maintains systems for tracking application movement and workflow

USPTO PCT QMS – Administration

Deputy Commissioner for Patent Operations

DCPO staff monitors workload fluctuations and makes adjustments in an attempt to ensure timely search and examination of PCT applicationsEach Technology Center under the DCPO maintains systems to monitor the timely issuance of search and examination reports

USPTO PCT QMS – Administration

Deputy Commissioner for Patent Examination Policy

OPCTLA operates the PCT Help Desk• Handles customer complaints• Takes corrective action where appropriate

or contacts PCT Operations or the Technology Centers with respect to necessary corrective actions

USPTO PCT QMS – Quality Assurance

Deputy Commissioner for Patent OperationsOffice of Patent Quality Assurance has primary responsibility for the USPTO’s internal quality assurance program

• Reviews a sampling of all PCT applications designed to ensure 95% confidence in review findings

• Evaluation covers 21 items including proper classification, appropriate field of search and search strategy, unity of invention, and appropriateness of opinions concerning novelty, inventive step, and industrial applicability

• Reviewers provide comments specific to each area of review

USPTO PCT QMS – Feedback Arrangements

Quality review reports distributed to the DCPO, OPCTLA, and Patents Technology Centers

Used to develop training and quality programs Aide in the identification of systemic errors which may need correction on an office-wide basis

OPCTLA personnel have regular contact with WIPO officials, and are available to officials from other Offices, for the purpose of receiving feedback on quality matters

USPTO PCT QMS – Communication and Guidance to Users

Office of PCT Legal AdministrationDevelops and provides training to users of the PCT system, including patent attorneys and agents, legal administrators, legal secretaries and other members of the patent community Operates the PCT Help desk

• In fiscal year 2006 handled more than 32,500 calls Provides information, forms, and updates on the PCT home page of the USPTO Internet site

USPTO PCT QMS – Internal Review

In addition to establishing a QMS, the Regulations and Guidelines also require each Authority to perform an internal review of its QMSThe USPTO continuously reviews its QMS and establishes a report at the end of the Fiscal Year

To evaluate and adjust training and quality improvement programs To develop and provide supplemental training to the Technology Centers to improve areas of weaknessTo ensure attainment and maintenance of high quality levels

Outsourcing

FY 2006: 900 Searches (incl. IPAU)Contracts awarded September 2006FY 2007: 5,000 at midyear

• Anticipating 15,000 by EOYNew cooperative projects with other offices

Outsourcing-Quality ControlsThe USPTO performed a substantive (2-3 hour) review on all applications during the initial phase.

Error types are categorized into three error levels Error rates are determined for each level Reviews are performed by Primary Examiners or Managers

The rate of substantive review will decrease as confidence in the work product is increased. Continuance of the contracts is contingent on acceptable error rates being maintained. The USPTO additionally performs a formality review for each application prior to mailing; The USPTO retains all responsibility for the quality of the applications with the Authorizing Officers being USPTO employees.

Additional Internal MeasuresSecond Pair of Eyes ReviewsAre any claims indicated to have a positive opinion under novelty and inventive step that appear to be trivial or overly broad?Were any negative opinions unreasonable, i.e. claim limitations missing, prior art not combinable, lacks obviousness rationale, etc.?Were any "X" and/or "Y" designations on the ISA/210 inconsistent with the opinion(s) on the ISA/237? Were any claims not considered, i.e. missed, on the ISA/210 and/or ISA/237?

Thank You