November 6, 2017
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Cooperation for an Expanded Collaborative Search Pilot with the JPO and KIPO
Expanded Collaborative Search Pilot Program aimed to optimize patent quality and timeliness.
Washington – The Department of Commerce's United States Patent and Trademark Office (USPTO) Joseph Matal, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, participated in the signing of bilateral Memoranda of Cooperation with the Korean Intellectual Property Office (KIPO) and the Japan Patent Office (JPO) on October 1 and October 2, respectively. Mr. Matal signed the MOC’s with Dr. Sung Yunmo, Commissioner for the Korean Intellectual Property Office (KIPO) and Ms. Naoko Munakata, Commissioner for the Japan Patent Office, to begin the second phase of the bilateral Collaborative Search Pilot (CSP) program. The MOC’s were signed at bilateral meetings held on the margins of the World Intellectual Property Organization (WIPO) General Assembly in Geneva, Switzerland.
The Expanded Collaborative Search Pilot (CSP) builds upon the successful first phase that was recently completed in the summer of 2017. The program is designed to provide the examiners with the best prior art by combining the search expertise of examiners at the USPTO and JPO or KIPO before issuing an office action in the patent application. The applications completed so far in the initial CSP program showed that all offices contributed relevant prior art to the prosecution history – with the result being a significant reduction in prosecution time and a substantially reduced need for Requests for Continued Examination to complete prosecution – with over a 90% allowance rate. The expanded version of the CSP program will build on these successes and continue to improve compact prosecution and enhance patent quality.
Beginning November 1, 2017, applicants wishing to take advantage of the benefits of the expanded CSP program will need to have unexamined corresponding counterpart applications in the USPTO and either/both KIPO and JPO. No-cost petitions need to be filed in the USPTO and at the desired partner Office(s), in accordance with their rules. Acceleration of examination of the applications in the Offices will take place once the petitions are granted. The Offices will simultaneously search and examine their respective application and will exchange and evaluate these results prior to the Offices sending an action to the applicant. An applicant can take advantage of both bilateral agreements simultaneously with the same USPTO application.
Improvements made in this version of the CSP program include removing the dependence on the First Action Interview (FAI) program, incorporation of references cited by partner offices in the First Action on the Merits (FAOM), a further reduction in the time from petition grant to FAOM, and reducing the requirement for claims correspondence to be limited to independent claims. There is a limit of 400 applications per year for each agreement.
“Collaboration with our partner offices has demonstrated that coordinating our examination efforts provides significant benefits to all parties – Offices and applicants alike. I look forward to seeing this program expand and become a strategy for applicants who file multinationally,” said Joseph Matal, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The Offices will continue working together to implement the expanded CSP program which began accepting petitions on November 1, 2017 and will continue accepting petitions for three years. Further details of the expanded CSP program is available in a recent Federal Register Notice(link is external) and on the CSP web site.
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