Banding Together Part II: Expanded Collaborative Search Pilots Launched Between USPTO, JPO, and KIPO

In May of 2016, we first documented the launch of the Collaborative Search Pilots (CSPs) between the USPTO, Japanese Patent Office (JPO), and Korean Intellectual Property Office (KIPO) in the blog entitled: Banding Together. The bilateral pilots between the USPTO and JPO, and the USPTO and KIPO, respectively, aimed to provide a comprehensive prior art search for an applicant by aggregating search results at two patent offices (e.g., USPTO and JPO or KIPO) prior to the issuance of an office action. The bilateral pilots expired this past summer and were largely viewed as a success. In particular, as a result of the combined prior art search at two offices, fewer RCEs were issued and prosecution time to allowance was reduced.

Accordingly, in view of the success of the CSP, an Expanded CSP (ECSP) was recently instituted on November 1, 2017 between the USPTO, JPO, and KIPO, and will last for three years (i.e., November 1, 2020). The ESCP allows for applicants to petition for participation in the program and receive accelerated examination, and offers numerous other “expanded” benefits or improvements. For example, in contradistinction to the CSP, there is no longer a requirement for use of the First Action Interview (FAI) program, and references cited by each of the participating partner offices (e.g., USPTO and JPO) will be accorded a “special status” and integrated between offices in advance of issuance of any First Action on the Merits (FAOM).

The ECSP also includes several petition requirements for participation. For example, petitions must be filed using form PTO/SB/437 in partner offices within fifteen days of each other, and must be submitted prior to any examination on the merits. Each petition also requires a claim correspondence table, and only requires correspondence between independent claims, an improvement upon the CSP.  No petition fee is required. Further, the US application must contain 3 or fewer independent claims and 20 or fewer total claims; no multiple claims can be included.  Upon granting of a petition that satisfies the foregoing requirements, each office will next conduct a prior art search, and will then exchange search results prior to issuing an office action from each office to the applicant.

For applicants that file applications in both the USPTO and JPO or KIPO, the ECSP offers an even more effective means for expedited examination as well as enhanced examination quality, including fewer RCEs and shorter examination time. Petition requests, however, will be granted for only 400 applications per year. Thus, prior to filing a PTO/SB/437, applicants may want to prioritize applications in their portfolio before deciding whether or not to participate in the program.

For more information, including details on requirements and advantages of the ECSP program, visit Cooperation for an Expanded Collaborative Search Pilot with the JPO and KIPO and/or the Federal Register Notice.