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PCT Collaborative Search and Examination Pilot Program
The two year window for participating in the PCT Collaborative Search and Examination (CS&E) Pilot Program opened on July 1, 2018. The PCT CS&E Pilot Program allows PCT applicants to obtain search and written opinion contributions from the five participating IP5 Offices during the international phase. The participating IP5 Offices are the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). Requests for participation in this pilot program must be filed by June 30, 2020 to be eligible for consideration.
In order to participate in the pilot program, an applicant must file a request together with the filing of the PCT application at the receiving Office of one of the five IP5 Offices or at the International Bureau (IB). The participation request form is available on the WIPO website at http://www.wipo.int/pct/en/filing/cse.html. Initially, only applications that are in the English language will be accepted for participation, but at a later time the IP5 Offices will announce when they will accept applications in other languages. At the USPTO, no languages other than English will be accepted, and the application must be filed electronically using EFS-Web. The request form must be separately identified using the document description “Request to Participate in PCT CS&E Pilot.” One of the five IP5 Offices must be selected as the International Searching Authority (ISA), but the ISA does not have to be the same as the receiving Office. For example, a PCT application filed in the USPTO may select the USPTO, the EPO, the KIPO, or the JPO as the ISA, subject to certain limitations described in the PCT Applicant’s Guide, Annex C/US. No additional fee is required to participate in the pilot program; applicants will continue to pay the same international search fee charged by each IP5 Office as the selected ISA. Applicants will be informed by Form PCT/ISA/224 whether the request is accepted.
Under the pilot, an examiner at the chosen ISA (“main examiner”) will conduct a search as usual, and will prepare a provisional international search report and written opinion. The provisional search report and written opinion will be transmitted to other examiners at each of the other IP5 Offices (“peer examiners”). These peer examiners will provide the main examiner with their contribution, including any additional search, in light of the provisional search report and written opinion. These peer contribution forms will later be made available as separate documents in the WIPO PATENSCOPE system. Based upon the peer contributions, the main examiner at the chosen ISA will establish a final international search report and written opinion. This final work product under the pilot program should be completed within the time limit prescribed by PCT Rule 42.1 (time limit for international search: 3 months from receipt of the search copy by the ISA, or 9 months from the priority date, whichever is later). However, the completion time is not guaranteed due to the additional burdens of the pilot program.
Each of the five IP5 Offices as the main ISA may only accept 100 applications in the pilot program. The USPTO will only accept 50 applications that designate the USPTO as the ISA during the first year of the pilot, and 50 applications during the second year of the pilot. One applicant may have only 10 applications accepted into the pilot program per each main ISA. For example, one applicant may have only 10 applications in the program in which the USPTO is designated as the main ISA.
The pilot program seeks to provide a higher quality search for which all five of the IP5 Offices contribute, and to provide applicants earlier information on patentability from all of the IP5 Offices.
Only the final search report and written opinion (not the provisional report or the peer contributions) may serve as the basis for a Patent Prosecution Highway (PPH) request.
If the pilot program later becomes a permanent offering for PCT applicants, there will be a specific additional fee for the collaborative search. It is anticipated that the maximum possible fee would be the aggregated amount of the search fees of the participating International Searching Authorities plus an administrative fee.
Further information regarding the PCT Collaborative Search and Examination Pilot Program can be accessed on the USPTO website at https://www.uspto.gov/patents-getting-started/international-protection/patent-cooperation-treaty/pct-collaborative-search.
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