As announced May 21, 2015, the USPTO will be entering into two pilot programs, one with the JPO and another with the KIPO. The goal of these programs is to determine whether a collaborative search for commonly filed applications can uncover better prior art and lead to more consistent results between Offices. Currently, the Patent Prosecution Highway (PPH) permits claims previously allowed in an Office of earlier filing to undergo accelerated examination in an Office of later filing. However, under the PPH, only the Office of later filing benefits from the prior examination, and the consistency of the examination results are not necessarily guaranteed. The new pilot programs are predicated on these bases.
The pilots’ procedures are based on the First Action Interview (FAI) program. Under the FAI program, the Examiner provides his or her search results to the Applicants in advance of substantive examination of the claims. The Applicants may then opt to conduct an interview with the Examiner to discuss the results of the initial search. Neither the FAI program nor the new CSP programs require any additional fees. However, the most significant difference between the programs is that Applications under the CSP programs will be accelerated. In addition, participation in the programs limit Applicants’ rights to traverse in the event a restriction or election requirement is issued.
Additionally, the two CSP programs will slightly differ from each other in an effort to determine which of the two variations is more effective. Specifically, in the program between the USPTO and the JPO, the information exchange happens prior to the Examiner fully forming the FAI based search report so that the FAI search contains both Offices’ input. On the other hand, in the program between the USPTO and the KIPO, the USPTO’s FAI based search report is conducted independently of the KIPO’s search report, and then both reports are provided to the Applicants for their consideration.
The JPO-USPTO pilot begins August 1, 2015, and the KIPO-USPTO pilot begins September 1, 2015. Petitions will be accepted starting on these respective start dates. Each program will accept 200 applications per Office per year (both programs will run for two year with the option to extend). Eligibility requirements include: a maximum of 3 independent claims and 20 claims total; correspondence between the claims in each Office; the earliest priority date must be post-AIA; the Application must be unexamined in both Offices; and the Petition to participate in the program must be granted in both Offices.