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United States Patent and Trademark Office – www.uspto.gov

Strategic Handling of Applications for Rapid Examination

(SHARE)

United States Patent and Trademark Office

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Background

2006 Cross filing Applications among IP5 Offices

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Background

• The concept of SHARE arose out of the discussions among the Trilateral Offices.

• A 2004 study conducted by the Trilateral Offices showed, most notably, that for USPTO-JPO/JPO-USPTO cross-filings, USPTO produced first action results prior to JPO first action in about 90% of cases, whereas the JPO produced first action results prior to USPTO first action in only about 10% of cases.

• The study revealed that the timing of the availability of OFF search and examination results relative to OSF pendency is far from optimal, which posed a major obstacle to work-sharing.

• Given the high volume of JPO-USPTO filings, this disparity represented a significant loss to the USPTO in potential efficiency gains.

• Subsequent work has been undertaken to improve the situation.

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• In SHARE, applications for which an office is the office of first filing (OFF) are prioritized in the examination queue.

• SHARE is expected to enhance the worksharing environment by increasing the volume of exploitable work product from the office of first filing (OFF).

Improving the Worksharing Environment: SHARE

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SHARE BENEFITS

• Increase examination effectiveness

• Office of second filing can reuse OFF work product to the maximum extent practicable

– Decrease overall pendency

– Improve quality

– Reduce redundant work

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Relationship with other Worksharing Mechanisms

• SHARE and PPH are complementary.

– Accelerate the examination in the office of first filing

– More OFF work product becomes available for PPH in the office of second filing (OSF)

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POSSIBLE ISSUES

• Effect on non-prioritized applications, e.g.

– Patent Term Adjustment?

– De Facto Deferred Examination?

• Forum Shopping?

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KIPO-USPTO SHARE Pilot

• KIPO-USPTO Pilot

– Initiated September 1, 2009

– 400 cases

– Selected in narrow technology (battery, fuel cells and semiconductors)

– Manual prioritization and notification of work product availability to the offices

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Status of other offices

• The EPO’s PACE program sets internal deadlines for work product for EP direct filings.

• The JPO’s JP-FIRST started in April 2008.

• More information is available at http://www.epo.org/patents/law/legal-texts/html/guiapp1/e/ga_aii.htm. and www.jpo.go.jp

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USPTO SHARE Strategy

Work groups have been created to develop a roadmap for 2010 implementation

• Policy/Legal

• Examination/Operations  

• Information Technology

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• Thank you.