[Federal Register Volume 81, Number 128 (Tuesday, July 5, 2016)]
[Notices]
[Pages 43591-43592]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-15850]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2016-0013]
Elimination of Publication Requirement in the Collaborative
Search Pilot Program Between the Japan Patent Office and the United
States Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO)
implemented a Collaborative Search Pilot Program with the Japan Patent
Office (JPO) on August 1, 2015, to study whether the exchange of search
results between offices for corresponding counterpart applications
improves patent quality and facilitates the examination of patent
applications in
[[Page 43592]]
both offices. Based upon feedback from the public, the USPTO is
modifying the Collaborative Search Pilot Program between JPO and USPTO
(JPO-CSP) by removing the requirement that the applications must be
published in order to participate in the pilot program. The JPO and
USPTO have determined that publication of the applications is
unnecessary for participation in the pilot program and that unpublished
applications can participate in the pilot program as long as applicants
grant access to the unpublished application and provide a translated
copy of the currently pending claims from the corresponding counterpart
application(s). Accordingly, publication of an application will no
longer be a prerequisite for participation in the JPO-CSP as of the
effective date of this notice. Instead, if unpublished, applicant must
provide an authorization of access to the unpublished application and
submit a translation of the currently pending claims from the
corresponding counterpart application(s). These modifications should
permit more applications to qualify for the program, supporting the
program's study of the efficacy of exchanging search results between
corresponding counterpart applications to improve patent quality and
facilitate examination.
DATES: Effective Date: August 1, 2016.
Duration: Under this pilot program, the USPTO and JPO will continue
to accept petitions to participate until August 1, 2017, two years from
the original effective date of the program (August 1, 2015). During
each year, the pilot program will be limited to 400 granted petitions,
200 granted petitions where USPTO performs the first search and JPO
performs the second search, and 200 granted petitions where JPO
performs the first search and USPTO performs the second search. The
offices may extend the pilot program (with or without modification) for
an additional amount of time, if necessary. The offices reserve the
right to terminate the pilot program at any time.
FOR FURTHER INFORMATION CONTACT: Daniel Hunter, Director of
International Work Sharing, Planning and Implementation, Office of
International Patent Cooperation by telephone at (571) 272-8050
regarding the handling of any specific application participating in the
pilot. Any questions concerning this notice may be directed to Joseph
Weiss, Senior Legal Advisor, Office of Patent Legal Administration by
telephone at (571) 272-7759. Any inquiries regarding this pilot program
can be emailed to [email protected].
SUPPLEMENTARY INFORMATION: The USPTO published a notice to implement a
joint work sharing initiative, a Collaborative Search Pilot Program,
between JPO and USPTO on July 10, 2015. See United States Patent and
Trademark Office and Japan Patent Office Collaborative Search Pilot
Program, 80 FR 39752 (July 10, 2015), 1417 Off. Gaz. Pat. Office 68
(August 4, 2015) (JPO-CSP Notice). The JPO-CSP Notice indicated that an
applicant can request, via petition to make special, to have an
application advanced out of turn (accorded special status) for
examination, if the application was published and satisfied other
requirements specified in the JPO-CSP Notice. The pilot program is
designed to ensure the applications are contemporaneously examined so
that examiners from both offices have a more comprehensive set of
references along with corresponding claim sets before them when making
initial patentability determinations. The USPTO has received feedback
and suggestions from stakeholders regarding the pilot program's design.
Under the JPO-CSP as originally implemented, each office conducted
a prior art search for its corresponding counterpart application and
then exchanged the search results with the other office before either
office issued a communication to the applicant regarding patentability.
As a result of this exchange of search results, the examiners in both
offices had a more comprehensive set of references before them when
making their initial patentability determinations. As only published
applications were permitted, examiners also had access to the currently
pending claims of both applications.
The USPTO and JPO have determined that the publication requirement
in the JPO-CSP Notice is unnecessary as long as the petition authorizes
access to the unpublished application and includes a translation of the
currently pending claims from the corresponding counterpart
application(s). Accordingly, the USPTO is modifying the JPO-CSP to
remove the publication requirement and instead require the applicant to
authorize access to the application and at least a machine translation
of the currently pending claims from the corresponding counterpart
application(s).
To participate in the pilot program, applicants should now use Form
PTO/SB/437JP-U, which is available at http://www.uspto.gov/patent/patents-forms, when filing a petition to make special under this pilot
program satisfying all other requirements set forth in the JPO-CSP
Notice. Requirements (1)-(3) set forth in Part III of the original JPO-
CSP Notice of August 1, 2015, are modified by this notice to reflect
the modifications discussed above. They are now as follows:
(1) The application must be a non-reissue, non-provisional utility
application filed under 35 U.S.C. 111(a), or an international
application that has entered the national stage in compliance with 35
U.S.C. 371(c) with an effective filing date no earlier than March 16,
2013. The U.S. application and the corresponding JPO counterpart
application must have a common earliest priority date that is no
earlier than March 16, 2013.
(2) A completed petition form PTO/SB/437JP-U must be filed in the
application via EFS-web. Form PTO/SB/437JP-U is available at http://www.uspto.gov/patent/patents-forms. If the application is unpublished
the petition must include a translated copy of the currently pending
claims from the corresponding counterpart application(s). A machine
translation is acceptable.
(3) The petition submission must include an express written consent
under 35 U.S.C. 122(c) for the USPTO to receive prior art references
and comments from the JPO that will be considered during the
examination of the U.S. application participating in this JPO Work
Sharing Pilot Program. The petition also must provide written
authorization for the USPTO to provide JPO access to the participating
U.S. application's bibliographic data and search reports in accordance
with 35 U.S.C. 122(a) and 37 CFR 1.14(c). Form PTO/SB/437JP-U includes
language compliant with the consent requirement(s) for this pilot
program.
All other requirements and provisions set forth in the JPO-CSP
Notice remain unchanged. Please see the JPO-CSP Notice for more
information on the program.
Dated: June 28, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2016-15850 Filed 7-1-16; 8:45 am]
BILLING CODE 3510-16-P