Imagine That IP Law Blog

THE COLLABORATIVE SEARCH PILOT PROGRAM

In an attempt to expedite and promote the quality of patent application examination, the United States Patent and Trademark Office (USPTO) began a Collaborative Search Pilot (CSP) program in partnership with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). The program is designed to provide USPTO examiners with the best prior art by collaborating with examiners at the JPO and KIPO that are examining corresponding Japanese and Korean patent applications.

In the initial CSP program, examiners shared and combined prior art searches before issuing office actions for the patent applicant. The initial program tested a “serial” search and evaluation process with the JPO and a “parallel” search and evaluation process with the KIPO.

Under the “serial” search pilot program, either the USPTO or JPO (whichever held the application with the earliest filing date) conducted an initial search and evaluation. Subsequently, the initiating office shared the results with the second office, which then performed a second search and evaluation.

Under the “parallel” search and evaluation process, the USPTO and KIPO examiners performed a “parallel” search on substantially similar claims. The search and evaluation stage at the USPTO substantially coincided with the search and evaluation stage at the KIPO. Both offices then exchanged and combined results.

The initial program was designed to provide applicants with the examiners’ search results and optional interviews prior to full examination of the claims. As a result, the applications completed in the initial CSP program had significantly reduced prosecution times. Additionally, the first completed phase of the CSP program exceeded a 90 percent allowance rate.

THE EXPANDED COLLABORATIVE SEARCH PILOT PROGRAM

On November 1, 2017, the USPTO improved and refined the initial phase of the CSP program by launching an expanded CSP program.  The expanded CSP program continues to partner the USPTO with the JPO and KIPO, however, the expanded program is designed to scale, and it is expected that the USPTO will announce additional future partner IP Offices in time. The expanded version, like the original CSP program, creates an inter-reliant environment between offices by combining and sharing searches and evaluations. However, participants are no longer required to use the First Action Interview Pilot Program (FAI), which bifurcated the prior art search from issuance of an office action. Instead, applications in expanded CSP will be accorded special status prior to First Action on the Merits (FAOM) and prior art references provided through the exchange of search results will be included in the FAOM.

As in the initial CSP program’s KIPO pilot, under the expanded CSP program, examiners in partnering IP offices perform a parallel search on substantially similar claims. The application process at the USPTO significantly corresponds with the application process at the partnering IP office. For instance, the search and evaluation stage at the USPTO coincides with the search and evaluation stage at the JPO and/or the KIPO.

After the USPTO and the partnering offices grant an applicant’s petitions to use the program, the applications are placed on the examiners’ “special” dockets – meaning the examiners have four months to provide search results to the corresponding office. After exchanging search results, each office has the opportunity to reevaluate their search results before sending an office action to the applicant. Below is the parallel search and evaluation process under the expanded CSP program.

Benefits of Participation

For those considering the expanded CSP program, it is useful to note the following key benefits for participation:

• Greater consistency in examinations across Offices, leading to more certainty of IP rights;
• Availability of prior art and previous actions to later examination offices, yielding faster prosecution and higher quality patents;
• Priority placement of applications resulting in expedited search results and final disposition, in other words, free accelerated examination;
• Potential reduced prosecution, yielding cost savings to applicants;
• A reduced likelihood of receiving foreign art during pendency of examination that may result in the need to file an IDS or RCE that could delay examination; and
• Free petition in the USPTO.

Qualifications for Participation

To qualify for the program, applicants must have unexamined, corresponding counterpart applications (filed no earlier than 3/16/13) in the USPTO and a partnering office. Applicants may utilize the same USPTO applications to qualify for the program with multiple IP Offices. Additionally, no-cost petitions must be filed in the USPTO and the corresponding Office(s), in accordance with the respective office’s rules. The petitions must include up to three  corresponding independent claims. Other restrictions include a limit of twenty total claims and no multiple dependent claims in the USPTO application.

The offices began accepting petitions on November 1, 2017, and will continue to do so for three years. However, applications will be limited to 400 per year for each agreement.