Are two heads, or in this case, two patent offices, better than one for examination? The U.S. Patent and Trademark Office (USPTO) launched two pilot programs to determine just that, i.e., whether collaborative search and its evaluation in commonly filed claims can improve the examination process and result in more consistent results across patent offices. Here, the USPTO will collaborate with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO), collectively called the Collaborative Search Pilot Program (CSP). The pilots began on August 1, 2015, for the JPO and September 1, 2015, for the KIPO. Each pilot will run for two years with an option to extend.
While the goals of the respective CSP programs are the same, the programs are run differently during the examination process. For the JPO pilot, examination runs serially; meaning, the information exchange between the offices occurs prior to the examination and specifically prior to the examiner fully forming the Pre-Interview Communication (PIC) form in order to include input from both offices. In contrast, for the KIPO pilot, examination runs parallel. That is, the USPTO’s PIC form is prepared independent of KIPO and both offices’ work are provided to the applicant for consideration.
The CSP programs are based on the USPTO’s First Action Interview (FAI) program and are free. The applicant and the application must meet a set of requirements in order to be considered for CSP. To participate, the applicant must permit the USPTO and its counterpart to share information and agree that the JPO/KIPO search results and commentary be published in the US Application. The application itself has a slightly longer list of requirements—it must be limited to 3 independent claims and 20 total claims, directed to a single invention, the claims must correspond between offices (with slight variations), the earliest priority date must be post-AIA, the application must be unexamined in both Offices, and the application must be granted Petition in both Offices. Of note, participation in CSP will result in an application being taken out of turn in allowing for expedited search results and final disposition.
For more information, including up to date statistics on the number of CSP Applications filed so far, visit the USPTO CSP page.