On April 10, 2018, the USPTO conducted another Patent Quality Chat; the topic of this month’s chat was the Collaborative Search Pilot Program (CSP). A link to the CSP Patent Quality Chat slides can be found here.
In November 2017, the USPTO launched the Expanded Collaborative Search Pilot Program with the Japanese Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). The Expanded CSP builds upon user feedback from the USPTO’s original Collaborative Search Pilot Program. In particular, there is no longer a requirement to use the First Action Interview Pilot Program as in the original CSP, and the requirement for claims correspondence is reduced to only independent claims. The Expanded CSP allows applicants that have unexamined corresponding counterpart applications in the USPTO and either/both KIPO and JPO, to have their applications simultaneously searched and examined. The partner patent offices exchange and evaluate the search and examination results prior to each of the offices sending an action to the applicant. The program is designed to combine the search expertise of the participating offices to provide more comprehensive prior art. Participating applicants will also have their pilot applications examined out of turn, resulting in accelerated examination.
The Expanded CSP runs from November 1, 2017 through October 31, 2020. Applicants must consent to permit the USPTO and its partner offices to share information under 35 U.S.C. § 122 by filing a petition to make special under the Expanded CSP; a link to the petition can be found here. For a petition to be granted, the following requirements must be satisfied:
(1) US application must have an effective filing date of no earlier than March 16, 2013 (i.e., be a post-AIA application) and the US application and counterpart applications must have a common earliest priority date of no earlier than March 16, 2013;
(2) Completed petition form PTO/SB/437 must be filed in the application via EFS-Web;
(3) Petition must be filed before examination has commenced;
(4) Petition filed in the USPTO and request(s) for participation filed in the designated partner IP office(s) for the corresponding counterpart application(s) must be filed within 15 days of each other;
(5) Petition must include a claims correspondence table establishing “substantial corresponding scope” between all independent claims present in the US application and the corresponding counterpart application(s) in the designated partner IP offices; and
(6) US application must contain 3 or fewer independent claims, 20 or fewer total claims, and no multiple dependent claims.
Of note, an applicant may file a Preliminary Amendment conforming the number and type of claims to make the application eligible for the Expanded CSP. There is also no fee for the Expanded CSP. Once a first action on the merits issues, the special status granted under the Expanded CSP expires.
A link to the Federal Register notice can be found here detailing the Expanded Collaborative Search Pilot Program.