[Pct] PPH at the USPTO, deference

[Timothy Snowden]

They don't defer at all. EPO they tend to give most credence to the 
search results (i.e., they don't tend to /as often/ go hunting for new 
references, unless the US Examiner is familiar with the area and has a 
'feel' for something the EPO examiner didn't find). However, they /may 
/still come to a different conclusion since while US and EPO have an 
/analagous/ patentability framework, US's non-obviousness standard under 
KSR is arguably more difficult than EPO's 'technical effect' standard 
(which can be difficult when you're going for a broad patent, but is 
also mildly more conducive to obtaining more 'incremental' patents). 
Also keep in mind that the EPO doesn't have your IDS to supplement with 
like US examiner will (however, it's fairly rare that a US examiner will 
use any of your IDS refs... it's always a pleasant surprise when they do).

That said, a positive report from EPO probably is going to give you the 
most leverage in US -- and I have successfully argued to US examiners 
before that they're on shaky ground when they're arguing non-obviousness 
over the same references a EPO examiner has found inventive step over. 
Not a slam dunk, but helpful.

Other countries are helpful -- e.g., Korea is great if you want a PPH on 
software (they're also very friendly to deal with). Canada doesn't seem 
to carry quite as much weight as EPO. I don't have a lot of experience 
with others.

Hope that helps.


On 11/6/2023 4:01 PM, don tiller via Pct wrote:
>
> Has anyone noticed that US examiners defer to any particular foreign 
> patent office more than others in a PPH examination?
>
> Don Tiller
>
> *D. Tiller Law **PLLC***
>
> 2501 Parkview Drive, Suite 312
>
> Fort Worth, TX 76102
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