The US Patent and Trademark Office (USPTO) recently began two collaborative search pilot programmes, one with the Japanese Patent Office (JPO) and a second with the Korean Intellectual Property Office (KIPO). Both pilot programmes aim to increase patent quality by giving applicants a second prior art search to consider before an initial determination of patentability is made, while also promoting work sharing between patent offices.
In the USPTO, the collaborative search programmes (CSPs) go hand-in-hand with the Office's first action interview (FAI) programme, which provides applicants an opportunity to have an interview with the examiner before a formal examination is completed. The pilot programmes, which are similar to each other but differ with respect to work sharing procedures, produce a pre-interview communication (PIC) for the applicants as part of the FAI programme.
In the JPO pilot programme, a "serial" search is conducted whereby one office, either the USPTO or the JPO (based on the earliest filing date) first conducts a search. The initial search and evaluation is then sent to the second office, which conducts its own search and evaluation but with the benefit of the first search. The results are combined and sent by the second office both to the applicant and the first office, which also forwards to its applicant. In this way, the US applicant receives a PIC that consists of both offices' input.
In the KIPO pilot programme, a "parallel" search is undertaken, with both offices independently conducting a search and evaluation. The results are exchanged between the offices, and the applicants in each country receive both reports.
To participate, applicants should file petitions in both offices within 15 days of each other, and both applications must contain substantially corresponding claims. In the US an EFS-web petition to make special is required. The application can contain no more than three independent claims and 20 claims in total, and must be directed to a single invention. Multiple dependent claims are prohibited.
Applications in the USPTO accepted into either pilot programme will be granted special status. They will thus be taken out of turn and receive expedited processing until the PIC issues, after which expedited processing ends. This all comes at no extra cost, as the standard $140 petition fee is being waived for these pilot programmes. The programmes are intended to last for two years – until August 1 2017 with the JPO and September 1 2017 with the KIPO. Because of the differences in work sharing, an application cannot participate in both pilot programmes.
Applicants planning to file in the USPTO and in the JPO and/or KIPO should consider using the collaborative search programme. The ability to receive search results from two patent offices and then, if desired, conduct an interview with the examiner at the USPTO, all before a first action on the merits, should appeal to many. And all of this comes in an expedited time frame and at no additional cost. There is a lot to like about these pilot programmes.
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Scott Malpede |
Fitzpatrick, Cella, Harper & Scinto1290 Avenue of the AmericasNew York, NY 10104-3800Tel: +1 212 218 2100Fax: +1 212 218 2200info@fchs.comwww.fitzpatrickcella.com
