[Federal Register Volume 82, Number 208 (Monday, October 30, 2017)]
[Notices]
[Pages 50122-50125]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2017-23661]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2017-0036]
Expanded Collaborative Search Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO)
conducted two separate Collaborative Search Pilot Programs (CSPs)
during the period of 2015 through 2017. One of these programs was
conducted with the Japan Patent Office (JPO) and the other with the
Korean Intellectual Patent Office (KIPO). Improvements in patent
quality and examination pendency were identified as positive outcomes
from these two original CSPs. Building on the success of these two
programs, the USPTO is participating in a new, expanded CSP (Expanded
CSP) in which applicants may request that multiple partnering
Intellectual Property (IP) offices exchange search results for their
counterpart applications prior to formulating 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 issues an office action. By this exchange of search results, the
examiners in all designated partner IP offices will have a more
comprehensive set of prior art references to consider when making
initial patentability determinations. In addition to changing the
number of IP offices that may be providing search results to the USPTO,
Expanded CSP provides applicants with more flexibility by not requiring
that applicants follow the procedures of the First Action Interview
Pilot Program (FAI). Expanded CSP will allow the USPTO to study the
impact on examination processes resulting from exchanges of search
results between the USPTO and multiple partner IP offices prior to
formulating and issuing office actions.
DATES: Under Expanded CSP, the USPTO and partner IP offices will each
accept requests to participate from November 1, 2017, through November
1, 2020, and each IP office will not grant more than 400 requests per
year per partner office. The offices may extend the pilot program (with
or without modification), if necessary. Each office reserves the right
to withdraw from the program at any time.
FOR FURTHER INFORMATION CONTACT: Inquiries regarding the handling of
any specific application participating in the pilot may be directed to
Daniel Hunter, Director of International Work Sharing, Planning, and
Implementation, Office of International Patent Cooperation, by
telephone at (571) 272-8050. Any inquiries regarding this pilot program
can be emailed to [email protected]. Inquiries concerning this notice may
be directed to Joseph F. Weiss, Jr., Senior Legal Advisor, Office of
Patent Legal Administration, by phone (571) 272-7759.
SUPPLEMENTARY INFORMATION:
I. Background: The USPTO is continually looking for ways to improve
the quality of issued patents and to promote work sharing with other IP
offices throughout the world. Work sharing benefits applicants by
promoting compact prosecution, reducing pendency, and supporting patent
quality by reducing the likelihood of inconsistencies in patentability
determinations (not predicated upon differences in national patent
laws) between IP offices. The USPTO has launched numerous work sharing
pilot programs, including the recently completed CSPs with JPO and
KIPO. In these completed CSPs, the participating offices implemented
administrative procedures to facilitate work sharing between the USPTO
and a single designated partner IP office in the form of sharing search
results of related counterpart applications. Feedback from the
completed CSPs showed sufficiently positive benefits to justify
expanding CSP to permit work sharing between the USPTO and more than
one designated partner IP office for the same U.S. application.
The USPTO will cooperate in an Expanded CSP to determine whether
exchanging the results from searches independently performed by
multiple IP offices, which occur substantially simultaneously, also
increases the efficiency and quality of patent examination. This
Expanded CSP is designed so that this exchange of search results would
occur prior to the IP offices making initial patentability
determinations. The current partner IP offices for the Expanded CSP are
JPO and KIPO. The USPTO will announce future partner IP offices when
they are designated.
Currently, applicants in the USPTO having U.S. applications with
claims of foreign priority may have search results and prior art cited
to them by the foreign IP office during pendency of their U.S.
applications. Often, applicants submit the prior art after examination
on the merits is already underway in their U.S. application. Upon
evaluation of the search results and cited prior art, the U.S. examiner
may determine that the prior art cited by the foreign office is
relevant to patentability and merits being used in further examination
before making a final determination on patentability of the pending
claims. This delay caused by further examination results in additional
cost to applicants and the USPTO that could have been avoided if the
U.S. examiner was in possession of the foreign office's search results
before commencing examination of the U.S. application. Furthermore, in
light of the USPTO's various expedited examination programs, the
possibility exists that a U.S. application may reach final disposition
before the applicant is in receipt of a foreign office's search
results. The exchange of search results between IP offices before an
initial determination on patentability should increase efficiency and
promote patent examination quality.
In order to study the benefits of the exchange of search results
between multiple IP offices, current USPTO examination practice will be
modified for applications in Expanded CSP so that a search will be
conducted and search results generated, without issuance of an Office
action. The U.S. applications in Expanded CSP will also be ``made
special'' pursuant to USPTO procedures to ensure that they are
contemporaneously searched with their corresponding counterpart
applications.
In the original version of the CSP, the USPTO required the use of
the First Action Interview Pilot Program (FAI), which bifurcated the
prior art search from issuance of an Office action. The USPTO has
determined that it is unnecessary to require applicants participating
in Expanded CSP to use FAI procedures. Instead, applications in
Expanded CSP will be accorded special status prior to first action on
the merits (FAOM) and prior art references provided through the
exchange of search results will be included in the FAOM.
[[Page 50123]]
Expanded CSP in the U.S. requires a petition to make special for
the participating application and authorization to exchange information
with the designated partner IP office(s) prior to an initial
determination of patentability. As this work sharing program is
operating under a common framework across all agreements between the
USPTO and all partner offices, it is permissible to participate in
Expanded CSP with multiple partner offices simultaneously, and the
program is open to adding additional partner IP offices once
appropriate agreements are in place.
II. Overview of Expanded CSP: An application must meet all the
requirements set forth in section III of this notice to be accepted
into Expanded CSP. Applicants must file a Petition to Make Special
Under the Expanded Collaborative Search Pilot Program using form PTO/
SB/437 via EFS-web in a U.S. application. Use of the form is mandatory
and will assist applicants in complying with the pilot program's
requirements, as well as assist the USPTO in quickly identifying
participating applications. Form PTO/SB/437 is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. The collection of information
involved in this pilot program has been submitted to OMB. This
collection will be available at OMB's Information Collection Review Web
site, www.reginfo.gov/public/do/PRAMain.
In addition to a petition 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. (Partner IP offices may require a petition
or a request; therefore, for purposes of this notice, usage of the term
`request' refers to the initial submission that a partner IP office
requires to initiate participation in Expanded CSP.) As each partner IP
office's conditions for entry may differ, applicants should review the
requirements of the relevant partner IP offices to ensure compliance.
No fee for a petition to make special under 37 CFR 1.102 is
required for participation in Expanded CSP.
New patent applications are normally taken up for examination in
the order of their U.S. filing date. Applications accepted into
Expanded CSP will receive expedited processing by being granted special
status and taken out of turn until issuance of an FAOM, but will not
maintain special status thereafter. Designated partner IP offices and
the USPTO will be sharing search results before issuance of an initial
determination on patentability. Participants in Expanded CSP should
review the references cited in each respective office's 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 file an Information Disclosure Statement
(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,
37 CFR 1.98, and Manual of Patent Examining Procedure (MPEP) sec.
609.04(a)-(b). See also MPEP secs. 609 and 2001.06(a).
Each office may reevaluate the workload and resources needed to
administer Expanded CSP at any time. The USPTO will provide notice of
any substantive changes to the program (including early termination of
the program) at least 30 days prior to implementation of any changes.
III. Requirements for Participation in Expanded CSP: The following
requirements must be satisfied for a petition under Expanded CSP to be
granted:
(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, with an effective filing date of no earlier than March 16,
2013. For corresponding counterpart applications filed in accordance
with the agreement between the USPTO and KIPO only, plant applications
filed under 35 U.S.C. 161 are also eligible. The U.S. application and
all corresponding counterpart applications must have a common earliest
priority date that is no earlier than March 16, 2013. The disclosures
of the U.S. application and all counterpart applications must support
the claimed subject matter as of a common date. The U.S. application
must be complete and eligible to receive a filing receipt at the time
the petition is filed.
(2) A completed petition form PTO/SB/437 must be filed in the
application via EFS-Web. Form PTO/SB/437 is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. Based upon the agreements
reached between the USPTO and the partner IP offices, a separate
petition to make special must be filed in the U.S. application for each
partner IP office that the applicant designates.
The petition (Form PTO/SB/437) includes:
(A) An express written consent under 35 U.S.C. 122(c) for the USPTO
to accept and consider prior art references and comments from each
designated partner IP office during the examination of the U.S.
application;
(B) Written authorization for the USPTO to provide to the
designated partner IP office access to the participating U.S.
application's bibliographic data and search results in accordance with
35 U.S.C. 122(a) and 37 CFR 1.14(c); and
(C) A statement that the applicant agrees not to file a request for
a refund of the search fee and any excess claim fees paid in the
application after the mailing of the decision on the petition to join
Expanded CSP. Note: Any petition for express abandonment under 37 CFR
1.138(d) to obtain a refund of the search fee and excess claim fee
filed after the mailing of a decision on the petition will be granted,
but the fees will not be refunded.
(3) Petitions must be filed before examination has commenced.
Examination may commence at any time after an application has been
assigned to an examiner. Petitions should preferably be filed before
the application has been assigned to an examiner to ensure that the
USPTO does not examine the application before recognizing the petition.
Therefore, applicants should check the status of the application using
the Patent Application Information and Retrieval (PAIR) system to see
if the application has been assigned to an examiner. If the application
has been assigned to an examiner, the applicant should contact the
examiner to confirm that the application has not been taken up for
examination and inform the examiner that a petition to participate in
Expanded CSP is being filed. Following this guidance will minimize
delays caused by remedial corrective action when a petition is not
recognized before examination commences. Further, examination must not
have commenced in the identified corresponding counterpart
application(s) before each designated partner IP office when filing
petitions requesting participation in the U.S. application.
(4) The petition filed in the USPTO and any request filed in a
designated partner IP office must be filed within 15 days of each
other. If the petition and request(s) are not filed within 15 days of
each other, the applicant runs the risk of one of the pending
applications being acted upon by an examiner before entry into the
pilot program, which will result in the applications being denied entry
into Expanded CSP. The request for
[[Page 50124]]
participation filed in the corresponding counterpart application(s) for
Expanded CSP must be granted by at least one of the designated partner
IP offices in order to participate 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 U.S. application
and the corresponding counterpart application(s) filed in the
designated partner IP office(s). The claims correspondence table must
individually list the claims of the instant U.S. application and
correlate them to the claims of the corresponding counterpart
application having a substantially corresponding scope. Claims are
considered to have a ``substantially corresponding scope'' where, after
accounting for differences due to claim format requirements, the scope
of the corresponding claims in the corresponding counterpart
application(s) would either anticipate or render obvious the subject
matter recited under U.S. law. Additionally, claims in the U.S.
application that introduce a new/different category of claims than
those presented in the corresponding counterpart application(s) are not
considered to substantially correspond. For example, where the
corresponding counterpart application(s) contain only claims relating
to a process of manufacturing a product, any product claims in the U.S.
application are not considered to substantially correspond, even if the
product claims are dependent on process claims that do substantially
correspond to claims in the corresponding counterpart application(s).
Applicants may file a preliminary amendment in compliance with 37 CFR
1.121 to amend the claims of the U.S. application to satisfy this
requirement when attempting to make the U.S. application eligible for
the program. A translated copy of the claims in English for each
counterpart application is required if the application in the
designated partner IP office(s) is not publicly available in English. A
machine translation is sufficient. Non-corresponding claims need not be
listed.
(6) The U.S. application must contain 3 or fewer independent claims
and 20 or fewer total claims. The U.S. application must not contain any
multiple dependent claims; the corresponding counterpart application
may contain multiple dependent claims in accordance with national
practice of the partner IP office where it is filed. For a U.S.
application that contains more than 3 independent claims or 20 total
claims, or any multiple dependent claims, applicants may file a
preliminary amendment in compliance with 37 CFR 1.121 to cancel the
excess claims and/or the multiple dependent claims to make the
application eligible for the program.
IV. Treatment of Petition: As discussed in section III, the number
of petitions to make special filed in the U.S. application must equal
the number of designated partner IP offices where a corresponding
counterpart application has been filed. At least one designated partner
office must grant the request in order for that application and the
counterpart U.S. application to participate in Expanded CSP.
If examination commences in either the U.S. or a given designated
corresponding counterpart application before either the petition or
request is filed, then that combination of U.S. application and
designated corresponding counterpart application cannot participate in
Expanded CSP. Applicants are advised that, even if they timely file a
request with a designated partner office, if the USPTO is not informed
by the designated partner office of the filing of the request in the
corresponding counterpart application within 20 days of a petition
filing with the USPTO, then the USPTO may initially dismiss the
petition. In such situation, the applicant may request reconsideration,
as discussed in Item B, below.
A. Petition Grant by USPTO: Once a determination is made that all
the requirements of Section III of this notice are satisfied, the USPTO
petition will be granted and the application will be placed on the
examiner's special docket until an FAOM is issued. The USPTO and the
designated partner IP office(s) will then have four months to provide
search results. As a result, once the USPTO grants the petition, the
applicant will no longer have a right to file a preliminary amendment
that amends the claims. Any preliminary amendment filed after the
petition is granted and before issuance of an FAOM amending the claims
will not be entered unless approved by the examiner. After the petition
is granted and before issuance of the FAOM, the applicant may still
submit preliminary amendments to the specification that do not affect
the claims. All such submissions for the participating U.S. application
must be filed via EFS-Web.
B. Petition Dismissal by USPTO: If the applicant files an
incomplete Form PTO/SB/437, or if an application accompanied by Form
PTO/SB/437 does not comply with the requirements set forth in this
Notice, the USPTO will notify the applicant of the deficiencies by
dismissing the petition and the applicant will be given a single
opportunity to correct the deficiencies. If the applicant still wishes
to participate in the pilot program, the applicant must make
appropriate corrections within 1 month or 30 days of the mailing date
of the dismissal decision, whichever is longer. The time period for
reply is not extendable under 37 CFR 1.136(a). If the applicant timely
files a response to the dismissal decision correcting all the noted
deficiencies without introducing any new deficiencies, the USPTO will
grant the petition if a grantable request has been filed in a
corresponding counterpart application.
If the applicant fails to correct the noted deficiencies within the
time period set forth, the USPTO may dismiss the petition and notify
the designated partner IP office(s). The U.S. application will then be
taken up for examination in accordance with standard examination
procedures, unless designated special in accordance with another
established procedure (e.g., Request for Prioritized Examination,
Petition to Make Special Based on Applicant's Age).
C. Withdrawal of Petition: An application can be withdrawn from the
pilot program only by filing a request to withdraw the petition to
participate in the pilot program prior to issuance of a decision
granting the petition. Once the petition for participation in the pilot
program has been granted, withdrawal from the pilot program is not
permitted.
V. Requirement for Restriction: The claims must be directed to a
single invention. If the examiner determines that not all the claims
presented are directed to a single invention, the telephone restriction
practice set forth in MPEP sec. 812.01 will be followed. The applicant
must make an election without traverse during the telephonic interview.
If the applicant refuses to make an election without traverse, or if
the examiner cannot reach the applicant after a reasonable effort
(i.e., three business days), the examiner will treat the first claimed
invention (the group of claim 1) as constructively elected without
traverse for examination and include a basis for the restriction or
lack of unity requirement in the FAOM. When a telephonic election is
made, the examiner will provide a complete record of the telephonic
interview, including the restriction or lack of unity requirement and
the applicant's election, in the FAOM. Applicants are strongly
encouraged to ensure that applications submitted for Expanded CSP are
written such that they claim a
[[Page 50125]]
single, independent, and distinct invention. The applicant is
responsible to ensure the same invention is elected in both the U.S.
and all corresponding counterpart applications for concurrent treatment
in Expanded CSP.
VI. First Action on the Merits (FAOM): During examination, the
USPTO examiner will consider all exchanged search results and all
references submitted by the applicant in accordance with 37 CFR 1.97
and 37 CFR 1.98. Search results that are not received by the USPTO
within four months may not be included in the FAOM. The examiner will
prepare and issue an Office action and notify the applicant if any
designated partner IP office did not provide search results prior to
the issuance of the Office action. Once an FAOM issues, the application
will no longer be treated as special under Expanded CSP.
Dated: October 25, 2017.
Joseph Matal,
Associate Solicitor, performing the functions and duties of the Under
Secretary of Commerce for Intellectual Property and Director of the
United States Patent and Trademark Office.
[FR Doc. 2017-23661 Filed 10-27-17; 8:45 am]
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