Collaborative Search Pilot Programs
On August 1, 2015, a two year Collaborative Search Pilot (CSP) program took effect between the Japan Patent Office (JPO) and the United States Patent Office (USPTO), and on September 1, 2015, an independent CSP program between the USPTO and the Korean Intellectual Property Office (KIPO) will take effect; however, applications are not eligible to participate in both of these CSP programs.
The CSP programs were created to study whether the exchange of search results or reports between offices for counterpart applications improves patent quality and facilitates the examination of patent applications in both patent offices. For applications accepted into the US-JP CSP program, each patent office will conduct a prior art search for its counterpart application and exchange those results with the other office before either office issues a communication concerning patentability. In the US-KR Program, each office will concurrently conduct a prior art search for its corresponding counterpart application, and then the search report from each office will be exchanged between offices before either office issues a communication concerning patentability.
Unlike new US applications that are normally taken up for examination in the order of their US filing date, applications accepted into the CSP programs will receive expedited processing and be taken out of turn until issuance of a Pre-Interview Communication or first-action Notice of Allowability. However, participation in the US-JP CSP program is limited to only 400 granted petitions each year: 200 granted petitions where the USPTO performs the first search; and 200 granted petitions where the JPO performs the first search. Similarly, participation in the US-KR CSP program is limited to 400 granted petitions each year – 200 granted petitions for each office of earliest priority.
Notably, the granted petition limit of 200 set under the CSP programs where the USPTO performs the first search or is the office of earliest priority is much lower than the number of request the USPTO receives each year for participation the Patent Prosecution Highway (PPH) and Track One programs, as shown in the following Table:
As a result, while the CSP programs offer the benefit of expedited processing through the first substantive action, the number of applications that will be permitted to participate in the programs is very limited and the USPTO does not yet have an accurate estimate of the rate that the petitions will be filed under the CSP programs. The USPTO does expect to issue CSP statistics in October 2015 on their CSP page detailing the number of petitions received in the US-JP and US-KR CSP programs along with the number of granted petitions.
Please contact Oblon at (OblonPat@oblon.com) if you have interest in either of the CSP programs.