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Expediting Patent Prosecution with the New Collaborative Search Pilot Program

Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants.  The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) is available as of August 1, 2015.  The CSP between the USPTO and the Korean Intellectual Property Office (KIPO) becomes available on September 1, 2015.  The CSPs, which are free, afford applicants the opportunity to expedite prosecution of related applications at the USPTO and at the JPO or KIPO.  Unlike the Patent Prosecution Highway, allowance need not be secured in one of the participating offices prior to expediting examination in another office.

In general, the CSPs allow the USPTO and the JPO/KIPO to each conduct a prior art search for its pending application and share the search results with the applicant before a first action is mailed to the applicant.  The pilot nature of the CSPs will allow the offices to evaluate whether the search sharing improves the examination process or provides more consistent results across the patent offices.  Additionally, U.S. applications under either CSP will be granted special status and placed on the examiner’s special docket, effectively moving the application up in the queue for speedier examination.

The CSPs are part of the USPTO’s Patent Application Initiatives designed to advance the progress of a patent application.  These initiatives are discussed in more detail in the Global IP Matters article Helping U.S. Patent Applicants Get Speedy Examination.  The CSPs fall into the category of “Programs To Request Before The Mailing Of A First Action.”  The specific requirements of each CSP are:

  • Filing of a petition form at the USPTO and at the JPO or KIPO prior to the mailing of a first action by either the USPTO or JPO/KIPO
  • Application having no multiple dependent claims and no more than 3 independent claims and 20 total claims
  • Claims all directed to a single invention
  • Claims that substantially correspond between the USPTO and JPO/KIPO
  • Common earliest priority date must be post-AIA (after March 16, 2013)

After the CSP petitions are granted in both offices, JPO/KIPO applicants will receives a first action, and U.S. applicants will either receive a Notice of Allowance or a Pre-Interview Communication (PIC) identifying relevant prior art located during the search and inviting the applicant to request an interview with the examiner to discuss patentability.  The interview process is based on the existing USPTO First Action Interview Pilot Program.

Differences exist between the JPO CSP and the KIPO CSP with respect to when searches are conducted.  In the JPO CSP, one of the USPTO and JPO will conduct a search first and communicate the search results to the other office, which will then conduct a search and report the results to the first-searching office.  The first-searching office will be based on U.S. and Japan application filing dates or as otherwise agreed by the offices.  The issued PIC will accordingly reflect the searches of both the USPTO and JPO.

In the KIPO CSP, searches will be performed in parallel instead of sequentially.  U.S. applicants will thus receive one PIC from the USPTO and another PIC from the KIPO.

Each CSP is limited to 400 granted petitions annually (for the JPO CSP, 200 JPO as first-searching office and 200 USPTO as first-searching office; for the KIPO CSP, 200 for each office of earliest priority) and will run for two years, with the possibility for extension.  The USPTO will begin providing statistics of received and granted petitions at their CSP portal page in October 2015.

Applicants having post-AIA, corresponding applications pending at the USPTO and at one or both of the JPO and KIPO, may wish to review these applications now for their suitability for CSP participation in order to file the appropriate petitions before yearly limits are met.  Similarly, applicants filing applications in these jurisdictions within the availability of the pilot programs would be well served by considering participation in the CSPs to speed prosecution without payment of any extra patent office fees.

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Christina Sperry is a Mintz patent attorney who drafts and prosecutes patents for clients in the electrical, mechanical, and electro-mechanical fields. She represents companies and academic institutions in the medical technology field and helps protect patent innovations for medical and surgical devices.