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Additional Nelson Mullins Alerts

November 22, 2017

U.S. Patent and Trademark Office / Japanese Patent Office / Korean Intellectual Property Office Launch Expanded Collaborative Search Pilot Program

By Jane E. Remillard

The USPTO recently announced the expansion of its Collaborative Search Pilot (CSP) Program with the JPO and KIPO.  The expanded CSP program will run from November 1, 2017 through November 1, 2020.

The expanded CSP program will allow applicants to request that multiple partnering offices (USPTO, JPO, and KIPO) exchange independent prior art search results for their counterpart applications before formulating and issuing their respective first office actions.  This exchange of information between offices prior to the first office action aims to increase efficiency and promote patent examination quality. 

Benefits of the expanded CSP program include: greater consistency in examination, expedited issuance of a first Office Action, and more comprehensive prior art resulting from combined search expertise.  Applications in the initial CSP program showed significantly reduced prosecution time, substantially reduced need for RCE’s to complete prosecution, and experienced an allowance rate of over 90%. 

There is no fee to file the petition, and an applicant can utilize both bilateral agreements simultaneously with the same USPTO application.  However, the Program is limited to 400 applications per year for each agreement.  

Eligible applications include:

  • Any non-reissue, non-provisional utility application filed under 35 USC 111(a), or a national stage application filed under 35 USC 371, with an effective filing date of no earlier than March 16, 2013.
  • The application must be complete and eligible to receive a filing receipt at the time the petition is filed.  Petitions must be filed before examination has commenced.
  • The U.S. application and all corresponding counterpart applications must have a common earliest priority date no earlier than March 16, 2013, and the disclosures of the U.S. application and all corresponding counterpart applications must support the claimed subject matter as of a common date.

In order to participate, applicants should file a petition in the USPTO and a corresponding request in the JPO and/or the KIPO.  The petition submission must include a claims correspondence table establishing “substantial corresponding scope” between all independent claims in the U.S. application and the corresponding counterpart application(s).  In addition, the U.S. application must be directed to a single invention; contain 3 or fewer independent claims; 20 or fewer total claims; and must not contain any multiple dependent claims.  A Preliminary Amendment may be filed to amend the claims of the U.S. application to meet these requirements.  In addition, the petition filed in the USPTO and the request filed in the corresponding JPO/KIPO must be filed within 15 days of each other. 

Once the petition is granted, the Offices will have four months to exchange and evaluate their independent search and examination results prior to issuing a first Office Action in the respective applications. 

Further information is available in this Federal Register Notice and on the USPTO’s CSP website.