Fildes & Outland, P.C.

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Expanded Collaborative Search Pilot Program

On November 1, 2017, the USPTO began the Expanded Collaborative Search Pilot Program (CSP), which is set to run until October 31, 2020.  The Expanded CSP is the product of the initial Collaborative Search Pilot Programs that began on August 1, 2015 (with the JPO) and September 1, 2015 (with the KIPO).  The initial pilot programs ended on July 31, 2017 (JPO pilot) and August 31, 2017 (KIPO pilot).

According to USPTO statistics, 72 petitions were granted for participation in the initial CSP pilot with the JPO and 112 petitions were granted for participation in the initial CSP pilot with the KIPO.  The USPTO has indicated that the applications that participated in the initial pilot programs had reduced pendency, infrequent use of Requests for Continued Examination (RCEs), and over a 90% allowance rate.

The Expanded Collaborative Search Pilot combines the two initial pilot programs into a single program for all participating offices, and essentially has the same requirements as the initial programs aside from a few improvements to the process.  At its heart, the Expanded Collaborative Search Pilot program provides for the participating offices (USPTO, JPO, and KIPO) to share, and for applicants to receive, search results and first office actions early in the examination process.  The pilot program also seeks to reduce the IDS burden on the applicant by allowing the participating offices to share search results early in the application process so that applicant does not have to cite prior art and corresponding office actions via an IDS later in prosecution after examination has already begun.

In order to participate in the new Expanded Collaborative Search Pilot, the application must be a non-provisional utility application under Section 111(a) or a national stage application in compliance with Section 371, having an effective filing date no earlier than March 16, 2013.  Plant applications are also eligible only in connection with corresponding applications in the KIPO.  The earliest priority date of the U.S. application and the counterpart foreign application must be the same.  There is no fee for participation in this pilot program.

The petition for participation in the program must be filed using the USPTO form PTO/SB/437, and the petition and all corresponding documents in the application must be filed using the EFS-Web.  A petition must also be filed in the other partner office(s) that the applicant designates.  The petitions in the U.S. and foreign office(s) must be filed within fifteen days of each other, and the petition must be granted in at least one of the foreign offices.  The petitions must be filed before examination has begun in the application, and the USPTO suggests filing the petition in the USPTO before an examiner has been assigned to the application to assure no work has begun on examination of the application.

The petition must include a claims correspondence table that at least establishes a “substantial corresponding scope” between all the independent claims in the U.S. application and the corresponding counterpart application(s).  Essentially, “substantial corresponding scope” means that aside from differences in claim format requirements, the scope of the corresponding claims in the corresponding counterpart application(s) would either anticipate or render obvious the subject matter recited under U.S. law.  The U.S. application also must not include more than 3 independent claims and 20 total claims, and must not include any multiple dependent claims.  In order to comply with these requirements, a preliminary amendment may be filed in the U.S. application with the petition.  Also, if the corresponding counterpart foreign application is not available in the English language, a translation (a machine translation will suffice) of the claims in the counterpart application must be provided.

The claims in the U.S. application must also be directed to a single invention.  If the examiner finds that the claims are directed to more than one invention, then the examiner will contact the applicant by telephone and an election of invention must be made without traverse during the telephonic interview.  If the examiner cannot reach the applicant within 3 business days, then the examiner will treat the first claimed invention as constructively elected.  After any election of invention in the U.S. application, the applicant must make sure that the same invention has been elected in the corresponding counterpart applications.

If the petition is not granted by the USPTO, applicant will have 1 month or 30 days, whichever is shorter, to correct the deficiencies.  This time period is not extendable, and applicant will only have one opportunity to correct the deficiencies.

Once the petition is granted in the USPTO and at least one of the other designated foreign offices, the U.S. application will be placed on an examiner’s special docket to be taken up for examination out-of-turn.  The USPTO and the designated foreign office(s) will then have 4 months to provide and exchange search results.  After exchanging search results, the participating offices will evaluate the exchanged results and prior art, and exchange draft office actions.  The target for exchange of the office actions is 2 months from the exchange of the search results.  After this exchange, each participating office will issue a first office action on the merits.

After the issuance of the first office action, the U.S. application will no longer receive special status in the USPTO under the Collaborative Search Pilot.

The major difference between the Expanded Collaborative Search Pilot and the initial pilot programs is that the new expanded program has removed the requirement that applicants also participate in a first action interview in which the applicant receives search results and conducts an interview with the examiner prior to the issuance of the first office action.  Removal of the first action interview requirement will streamline the process and should result in the applicant more quickly receiving the first office action on the merits.  Another difference is that in the expanded program, the U.S. examiner will incorporate the references cited by the other partner office(s) in the first office action, so that applicant will not have to cite these references in an IDS.

Further information and a form for the Expanded Collaborative Search Pilot Program can be accessed on the USPTO website at https://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.

 

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