ENFORCEMENT
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eop_ipec_jointstrategicplan_hi-res
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Office of the Intellectual Property Enforcement Coordinator<br />
ACTION NO. 4.11: Monitor the use of<br />
the design patent system to protect designs<br />
embodied in or applied to technologies. USPTO<br />
will continue to consult with designers and other<br />
stakeholders and monitor the current legal<br />
framework as it pertains to protecting designs<br />
embodied in new and emerging technologies.<br />
3. Enhancing the Effectiveness of Patent Systems<br />
Abroad.<br />
As U.S. companies continue to expand into foreign<br />
markets, it is important for the U.S. to promote strong<br />
and effective patent protection and enforcement<br />
worldwide, reflecting the importance of patents to<br />
innovation and economic growth. A wide range of tools<br />
should be used to identify opportunities and challenges<br />
facing U.S. innovative industries in foreign markets.<br />
Some examples include:<br />
a. Reducing Patent Pendency.<br />
Patentees face a number of challenges around the<br />
world, including significant time lapses between the<br />
filing of patent applications and the issuance of patents<br />
(the “patent pendency” period). Long patent pendency<br />
periods can substantially curtail the effective term of<br />
the patent, diminishing its value and effectiveness as an<br />
incentive for innovation and investment.<br />
Long patent pendency periods reduce incentives<br />
for investment in research and development efforts,<br />
hinder innovation, and hamper job growth prospects. 37<br />
Shortening the patent pendency period can assist the<br />
patent holder to timely commercialize or otherwise<br />
obtain value from the exclusive right for the technology,<br />
thereby increasing the value of the patent. Also,<br />
shortening the patent pendency period reduces<br />
uncertainty for third parties, including the public,<br />
regarding the scope and enforceability of any patent<br />
that may eventually issue.<br />
While many of the underlying problems leading<br />
to long pendency periods in some countries can only<br />
be corrected by that country’s government (e.g., by<br />
adequately funding the patent office to permit needed<br />
hiring of patent examiners and to upgrade facilities and<br />
processing systems), opportunities exist to improve<br />
patent examination efficiency through streamlining of<br />
the international patent system. The international patent<br />
system, as it currently stands, includes considerable<br />
redundancy. Because patent rights are territorial,<br />
innovators must obtain patents separately in each<br />
country where they want the invention protected. This<br />
means that the innovator must file separate, substantially<br />
identical patent applications in each country, and those<br />
countries’ patent offices must then separately examine<br />
those same applications.<br />
Government policies must support efficient patent<br />
systems around the world that benefit domestic and<br />
foreign innovators and contribute to economic growth.<br />
For example, improved operations of patent offices,<br />
including such actions as the digitization of records,<br />
upgrading online search and e-filing capabilities, and<br />
hiring adequate patent examiners remain attractive<br />
opportunities for enhancing patent systems. The USPTO<br />
has been meeting since 2007 with its counterparts from<br />
Europe, Japan, Korea and China (known as the “IP<br />
5”) to explore approaches for enhancing cooperation<br />
on patent administration issues. According to WIPO<br />
statistics, the IP5 offices receive almost 80 percent of<br />
all patent applications filed worldwide, and as a result,<br />
improved practices and systems among the “IP 5” may<br />
lend themselves to global adoption. 38<br />
To streamline the patent system and avoid<br />
duplication of examining efforts, the USPTO and<br />
several other offices around the world are engaged<br />
in “work sharing” cooperation. The idea behind<br />
work sharing is that one patent office can reuse<br />
the work another patent office has already done in<br />
examining the same application to speed up its own<br />
examination. The USPTO’s primary work sharing<br />
vehicle is the “Patent Prosecution Highway” (PPH).<br />
Under the PPH, when an applicant receives a ruling<br />
from a first participating patent office that at least<br />
one claim in the application it examined is allowable,<br />
the applicant may request fast track examination of<br />
corresponding claim(s) in a corresponding patent<br />
application that is pending in a second participating<br />
patent office. The USPTO currently has PPH<br />
partnerships in place with thirty-one other patent<br />
offices around the world. PPH provides a promising<br />
solution to long patent pendency time periods, and<br />
expansion and enhancement of the program will<br />
strengthen patent systems globally.<br />
SECTION 4<br />
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