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Expanded Collaborative Search Pilot Program

 

by Michael D. Stein

Beginning November 1, 2017, the United States Patent and Trademark Office (USPTO) is participating in a new, expanded Collaborative Search Pilot Program in which applicants may request that multiple partnering Intellectual Property (IP) offices exchange search results for their corresponding counterpart applications before producing and issuing their office actions.  In Expanded CSP, each designated partner IP office will independently conduct a prior art search for its corresponding counterpart application.  The search results will then be exchanged between the designated partner IP office(s) and the USPTO before any IP office offices issue an office action.  A copy of the Notice in the Federal Register is attached herewith.

 

Initially, under the Collaborative Search Pilot Program (CSP) which began on August 1, 2015, only the Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO) were participants.  And the applicants had to follow the First Action Interview Pilot Program (FAI).

 

Under the Expanded Collaborative Search Pilot Program (Expanded CSP), currently only the JPO and KIPO are participants (so it is similar to the initial CSP , but the USPTO is in negotiations with other countries’ patent offices to be added to the Expanded CSP.  Plus, under the Expanded CSP, the applicant is not required to follow the procedures of the FAI, but instead, can have their application undergo normal prosecution.

 

 

To qualify:

  1. The application must be a non-reissue, not-provisional utility application filed under 35 USC 111(a) or an international application that has entered the national stage in compliance with 35 USC 371, with an effective filing date of no earlier than March 16, 2013.
  2. The applicants must file a Petition to Make Special Under the Expanded Collaborative search Pilot Program using for PTO/SB/437 via EFS-web;
  3. In addition to a request being filed with the USPTO , a request must also be filed in the corresponding counterpart applications in each applicant-designated partner IP office, in accordance with the requirements of that office.  The petition filed in the USPTO request and any requests in a designated partner IP office must be filed within 15 days of each other;
  4. No fee for a petition to make special under 37 CFR 1.102 is required for participation in Expanded CSP;
  5. The petition submission must include a claims correspondence table, which at a minimum must establish “substantial corresponding scope” between all independent claims present in the US application and the corresponding counterpart application (s) filed in the designated partner IP office (s); and
  6. The US application must contain 3 or fewer independent claims and 20 or fewer total claims.  The US application must not contain any multiple dependent  claims.

 

Applications accepted into Expanded CSP will receive expedited processing by being granted special status and taken out of turn until issuance of a first office action on the merits, but will not maintain special status thereafter.

 

The USPTO will be sharing search results before issuance of an initial determination on patentability.

 

If the references cited by any partner IP office are not already of record in the USPTO application and the applicant wants to ensure that the examiner considers the references, then the applicant should filed an IDS that includes a copy of the communication along with copies of any missing or newly cited references in accordance with 37 CFR 1.97.

 

If you have any questions or comments, please contact Michael Stein at mstein@steinip.com.

 

 

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