[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]
 BILLING CODE 3510-16-P