Ten Recommendations for the USPTO’s Patent Public Advisory Committee
Julie Burke, Ph.D.
PPH applications filed by Chinese entities are being processed faster and subject to fewer requirements and supported by fewer English language documents as compared to PPH applications filed by US or other entities1. A further survey using Petition.ai shows that China files the most PPH applications and that the USPTO provides these applications with a higher initial allowance rate2. Here are some recommendations to improve the examination quality of PPH applications and applications containing non-English language documents.
A. Provide patent examiners with a pool of human translators representative of the volume and language of non-English language documents3 associated with today’s examination process.
- Currently, MPEP 901.06(a)(D) limits examiner’s access to human oral translators to “major European languages and Japanese.” Apparently USPTO examiners have no access to human translators for Chinese, Korean or other language documents. Hire sufficient numbers of Chinese, Korean, and other language translators proportional to the number of such documents. Encourage examiners to obtain translations.
- The need for human Chinese language translators is especially important since Chinese to English machine translations are the lowest accuracy of any language combination.
B. Require examiners to obtain and make of record full English language translations when writing a rejection or determining claims to be allowable over the prior art.
- Currently, MPEP 901.05(d) encourages examiners proceed without human written translations where possible in early phases of examination and to rely solely on English language abstract.
- In contrast, MPEP 2173 requires examiners to make a clear and complete file record, section 707.07 and 2120 require a translation to be obtained so that the record is clear as to the precise facts the examiner is relying upon to support a decision.
- MPEP 901.05(d)’s guidance is incompatible with fast-tracked applications which are often allowed in the early stage of examination.
- When an Examiner reviews the full English language document of a foreign language document, via the Global Dossier, require the examiner to make that translation of record in the official file.
C. Require applicants to provide full English translations of documents submitted in an Information Disclosure Statement (IDS).
- Patent Prosecution Highway (PPH) applicants must comply with the requirements of 37 CFR 1.98 and provide an English language machine translation of the OEE’s work product which had determine that the claims were allowable.
- However, English language translations of documents cited in the OEE’s work product are currently not required.
- Many appeared absent from the Patent Center file, a feature more often observed for Chinese originating applications.
D. When patent attorneys or agents designate the entire foreign language document as relevance4 but then provide no English language translation or only English language abstract, consider whether:
- The PPH petition should be dismissed until full English language documents are supplied5
- The patent practitioner has fully complied with their duty to disclose to the USPTO all known information material to patentability under 37 CFR 1.56.
E. When a patent attorney or agent checks the T5 box on the IDS form6 to indicate an English translation is present, when one is not, or only English language abstract, consider whether
- the PPH petition should be dismissed,
- the IDS should not be accepted,
- the patent practitioner has fully complied with their duty to disclose to the USPTO all known information material to patentability under 37 CFR 1.56.
MPEP 1302.14 and 37 CFR 1.104 require patent examiners to provide reasons for allowance when the record of prosecution as a whole does not make clear his or her reasons for allowing a claim or claims. When no record of prosecution has been developed in a first action allowance, MPEP 1302.14(II)(B)(1) require reasons for allowance and those reasons should comply with the guidance and examples in MPEP 1302.14(III).
- In many instances, China-filed PPH applications are allowed in a first office action without any reasons for allowance, or with reasons for allowance that are considered not suitable in MPEP 1302.14(IV)7.
- PPH applications are to be examined for patentability like any other US patent application. The fact that the claims had been approved by CNIPA should not be reasons for allowing a US patent application.
F. A random selection of allowed and rejected PPH applications should be reviewed for quality just as non-expedited patent applications. MPEP 1308.08. PPAC can ask for quality statistics on PPH applications, including by originating country of earlier examination.
- If examiners are operating under some internal impression that expedited applications are not being pulled for random review, this may incentivize them to cut some corners and may explain aberrant examination behaviors noted during survey of PPH applications.
G. When errors are found in the allowance of expedited applications, the USPTO has the authority to withdraw applications from issue even after the issue fee is paid when it is determined that a mistake has been made by the USPTO. See 35 USC 151, 37 CFR 1.313(b) and MPEP 1308(II).
- Despite seeing many poorly examined applications, my survey of many hundred applications has not identified any withdrawn from issue to correct procedural errors.
H. The USPTO is well aware of CNIPA’s poor quality search and examination8. CNIPA’s quality is exasperated by the fact that CNIPA examiners focus their search of current patent applications on prior examined CNIPA documents. Very few non-Chinese language documents are cited by CNIPA. This raises the question of whether the CNIPA searches the same field of prior art as other offices - KIPO, EPO, JPO and USPTO? Is a favorable examination report from CNIPA be sufficient to permit entry into the USPTO’s PPH program?
I. While the USPTO collects and publishes statistics9 on PPH application pendency and allowance rates, the data is combined and then divided in an arbitrary way (number of PPH applications per year by country) such that one cannot compare whether there are any differences in the processing, pendency and allowance rates for PPH applications depending upon Office of Earlier Examination or the filing entity’s country of origin. PPAC may consider to asking for more relevant statistical information to determine how PPH applications are being processed by the USPTO.
J. If the Biden administration’s sanctions prohibit individuals and companies from helping Chinese advance in certain technological areas, would US patent attorneys and patent agents who represent such entities be at risk of violating President Biden’s executive order?
Survey using Petition.ai to identify PPH applications May 15, 2023, to August 15, 2023. ↩
The IDS submitted for Patent No. 11,732,999 included 12 non-English language patents dated 2017-2020, yet only English language abstracts were provided. The vast majority of the information in these 12 relevant documents is written in the Chinese language. The official electronic file lacks any indication that the examiner obtained and reviewed full English language translations of these 12 documents. ↩
US SN 18/268,943's IDS listed ten foreign language documents, each of which identified the "whole document" as relevant. Yet the IDS was annotated by the examiner to indicate that only the English portion, (abstract) of these ten documents were considered.
US SN 17/687,388 was allowed even though no references were cited by examiner and no full English translations provided by applicants. ↩
Examination of US SN 17/468,504 was expedited, even though the PPH petition was denied. The application was allowed over “the prior art of record,” the one 2018-dated document the examiner found. ↩
See the IDS filed in 16/965,367. Applicant checked the T5 box to indicate that English language translations are attached when they were not. Excerpts below.
Note preceding line instructing Applicants to check T5 box is English language translation is provided.
In US SN 17/213,591 the prior art of record consists of one English and six untranslated Chinese language documents. The examiner's reasons for first action allowance simply copies text from claim 1 with no explanation or discussion of the relevant prior art.
In US SN 17/615,111 no rejections were made. The patent examiner provided no reasons for the first action allowance.
In US SN 17/516,725, applicants filed no IDS. And while the examiner cited a whopping 21 references on the 892 form, not one of these references are mentioned in the Office action or reasons for allowance. The examiners reasons for allowance "None of the closest prior arts as cited teaches the combination of limitations as recited in claim 1."
The boilerplate reasons for allowance in US Patent No 11,762,700 state: "the prior art of record, either alone or in combination, fail to teach each and every limitation as set forth in the independent claim." ↩
Trademarks and Patents in China: The impact of non-market factors in filing trends and IP systems. January 2021, available at https://www.uspto.gov/sites/default/files/documents/USPTO-TrademarkPatentsInChina.pdf ↩
USPTO PPH Statistics Data October 2021 – September 2022. ↩