November 25, 2005

The Honorable Jon Dudas
Under Secretary of Commerce for Intellectual Property
 and Director of the United States Patent and Trademark Office
P.O. Box 1451
Alexandria, Virginia 22313-1451

            RE: Choice of International Searching Authorities

Dear Mr. Under Secretary:

            I am writing to express the support of the American Intellectual Property Law Association (AIPLA) for the recently announced agreement between the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) under which US applicants will be able to designate KIPO as an International Searching Authority and an International Preliminary Examining Authority.

            AIPLA is a national bar association whose more than 16,000 members are primarily lawyers in private and corporate practice, in government service, and in the academic community.  AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property.  Our members represent both owners and users of intellectual property.

            According to published reports, the USPTO expects to receive, in its capacity as a Receiving Office under the Patent Cooperation Treaty (PCT), nearly 50,000 international patent applications this year. Upon filing in the USPTO, PCT applicants were previously limited to choosing either the USPTO or the European Patent Office to perform an international search and an international preliminary examination. These were the only available choices, despite the existence of numerous competent Authorities, many of which accept applications in English.

            AIPLA welcomes the additional flexibility of being able to designate KIPO as an International Searching Authority and an International Preliminary Examining Authority. This will enable applicants to select KIPO when it is thought beneficial, whether because of the technology involved in a particular patent application or because of the relative cost of the service.

            We also understand that the USPTO has asked other competent International Searching and Preliminary Examining Authorities if they would be willing to act in such a capacity for US applicants. In addition to the strategic flexibility and potential cost savings that this would provide to applicants, the availability of additional Authorities could reduce the burden on the USPTO. This will, of course, help reduce the overall application pendency of regular US national applications. For all of these reasons, AIPLA very much supports this initiative and looks forward to the prospect of additional International Searching and Preliminary Examining Authorities becoming available to US applicants who file international applications in the U.S. Receiving Office. Ideally, every competent Authority that accepts English language applications should be available to US applicants.

            Thank you for taking this applicant-friendly initiative. Please let us know if AIPLA can assist you in any manner as you pursue this initiative.

Sincerely,

Michael K. Kirk
Executive Director
AIPLA