USPTO Announces Combined Petition Option for the Expanded Collaborative Search Pilot (CSP) Program

Update on March 29, 2022: In an email to stakeholders sent in the afternoon of March 29, 2022, the U.S. Patent and Trademark Office (USPTO) announced that it is withdrawing the Federal Register Notice regarding a new combined petition option for the Expanded Collaborative Search Pilot (CSP) program.  See our original posting below along with a link to the now-withdrawn Federal Register Notice.  The USPTO indicated that the Notice “was inadvertently published prematurely,” and that “[d]iscussions are continuing [with the JPO and the KIPO] to finalize the program.”  The USPTO also “apologize[d] for any confusion yesterday's message may have caused and look forward to sharing information on continued improvements to the CSP program soon.”  We will update you again when more information is available. 

On March 28, 2022, the U.S. Patent and Trademark Office (USPTO) announced that it has worked with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) to encourage participation in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is “designed to accelerate examination and provide the applicant with more comprehensive prior art by combining the search expertise of the USPTO and the JPO or the KIPO examiners before issuing a first office action.” 

Under the USPTO’s new combined petition option, applicants that file an application in the USPTO and the JPO need only file one combined petition in either the USPTO or the JPO in order to request participation in the Expanded CSP program.  For example, under the agreement between the USPTO and the JPO, one combined petition (Form PTO/437-JP) may be filed in either the USPTO or the JPO, and the receiving office will transmit the combined petition and supporting documents to the other office within 15 days of receipt. The applicant would not be required to file separate petitions in each office. 

Similarly, applicants that file an application in the USPTO and the KIPO need only file one combined petition in either the USPTO or the KIPO in order to request participation in the Expanded CSP program.  For example, under the agreement between the USPTO and the KIPO, one combined petition (Form PTO/437-KR) may be filed in either the USPTO or the KIPO, and the receiving office will transmit the combined petition and supporting documents to the other office within 15 days of receipt.  The applicant would not be required to file separate petitions in each office. 

The USPTO noted that it has retained the current option of filing a petition with both of the USPTO and the JPO, or with both of the USPTO and the KIPO, should applicants not wish to use the new combined petition option.  However, the USPTO is encouraging applicants to use the new combined petition option, touting “[e]hancements [that] include a more user-friendly layout, addition of multilingual text, and a foundation for data collection that both satisfies the petition requirements and streamlines the process for partaking in the Expanded CSP program.” 

According to the USPTO, each office will limit participation to up to 400 requests to participate in the Expanded CSP program per year.  The CSP program is currently effective until October 31, 2022. 

The USPTO indicated that the new combined petition option will be available beginning on March 29, 2022, concurrent with publication of additional details in the Federal Register, available here:  https://www.govinfo.gov/content/pkg/FR-2022-03-29/pdf/2022-06602.pdf or here.

We will provide more information as it becomes available.