[Federal Register Volume 83, Number 124 (Wednesday, June 27, 2018)]
[Notices]
[Pages 30145-30147]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-13800]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2018-0032]
Patent Cooperation Treaty Collaborative Search and Examination
Pilot Project Between the IP5 Offices
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO), the
European Patent Office (EPO), the Japan Patent Office (JPO), the Korean
Intellectual Property Office (KIPO) and the State Intellectual Property
Office of the People's Republic of China (SIPO), referred to
collectively as the IP5 Offices, will launch a pilot project on
Collaborative Search and Examination (CS&E) under the Patent
Cooperation Treaty (PCT). This will be the third such pilot. The USPTO,
the EPO, and the KIPO conducted two previous pilots in 2010 and in
2011-2012. The third pilot is needed to further develop and test the
concept amongst all the IP5 Offices. In particular, this IP5 pilot
project aims at assessing user interest for a CS&E product and the
expected efficiency gains for the IP5 Offices.
DATES:
Pilot Effective date: July 1, 2018.
Duration: Requests to participate in the PCT CS&E pilot project may
be filed with international applications filed through the receiving
Office of one of the IP5 Offices or the International Bureau of the
World Intellectual Property Organization (WIPO) until June 30, 2020.
During each year, the USPTO, in its capacity as the main International
Searching Authority, will accept a total of 50 international
applications into the pilot.
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 or by email to [email protected].
Inquiries concerning this notice may be directed to Michael Neas,
Deputy Director, International Patent Legal Administration, by phone
(571) 272-3289 or by email to [email protected].
SUPPLEMENTARY INFORMATION:
I. Concept
The concept of CS&E under the PCT refers to the collaboration of
examiners from different International Searching Authorities in
different regions and with different working languages on one
international application for the establishment of an international
search report and written opinion under PCT Chapter I, which, although
remaining the opinion of the chosen International Search Authority, is
based on contributions from all participating IP5 Offices.
Under the pilot project, the examiner of the IP5 Office from the
chosen International Searching Authority under PCT Rule 35 for a given
international application (``the main examiner'') works on the
application by conducting the search and examination and by
establishing a provisional international search report and written
opinion. These provisional work products are transmitted to examiners
from the other participating IP5 Offices in their capacity as an
International Searching Authority (``the peer examiners''). Each peer
examiner provides the main examiner with his contribution, in light of
the provisional international search report and written opinion. The
final international search report and written opinion are subsequently
established by the main examiner after having taken into consideration
the contributions of the peer examiners. Further details regarding the
implementation of the
[[Page 30146]]
CS&E concept within the framework of this pilot project are provided
below.
II. Framework
Under the pilot project, with a view to assessing the users'
interest for a CS&E product, international applications processed under
the collaborative scheme will be selected by applicants (``applicant-
driven approach''), whereas, under the two previous pilot projects, the
applications were selected by the participating IP5 Offices.
Applicants wishing to participate in the pilot project must submit
a request for participation in the pilot on a standard participation
form and file it together with the international application at the
receiving Office of one of the IP5 Offices or the International Bureau.
The participation form is available in all official languages of the
IP5 Offices on WIPO's website at http://www.wipo.int/pct/en/filing/cse.html.
For international applications filed in English, requests for
participation in the pilot may be filed beginning July 1, 2018. Each
applicant will be able to select only a limited number of international
applications for inclusion in the program.
Initially, only international applications filed in English will be
accepted into the pilot. Eventually, international authorities that
work in languages other than English will accept international
applications filed in those languages into the pilot. Each main
International Searching Authority that will accept international
applications filed in a language other than English will inform the
applicants accordingly by a communication published on its website.
Such communication will specify the additional languages that will be
accepted by a main International Searching Authority for the purposes
of this pilot and the date as of which requests for participation in
the pilot may be filed in such languages. The USPTO in its capacity as
an International Searching Authority only accepts applications in
English.
The receiving Office will transmit the participation form to the
International Bureau and the main International Searching Authority as
part of the record copy and search copy, respectively. Upon receipt of
the search copy, the main International Searching Authority will
determine if the request for participation in the pilot may be accepted
based on whether the applicable requirements detailed below in part III
are met. The International Searching Authority will notify the
applicant and the International Bureau of the acceptance or refusal of
the request for participation in the pilot using Form PCT/ISA/224
(Communication in Cases for Which No Other Form Is Applicable).
The main International Searching Authority will perform the search
and examination as it would for any other international application not
processed under this pilot. It will establish a provisional
international search report (Form PCT/ISA/210) (or, where appropriate,
declaration of non-establishment of international search report (Form
PCT/ISA/203)) and written opinion (Form PCT/ISA/237), and, where
applicable, a record of the search strategy. The form and content of
the record of the search strategy will generally be according to the
current practice of each International Searching Authority.
The main International Searching Authority will transmit the above
mentioned provisional work products to the peer International Searching
Authorities, where a peer examiner will prepare a contribution to the
final work product, taking into consideration the provisional work
products prepared by the main International Searching Authority and
performing additional searching to the extent deemed necessary.
With respect to the handling of cases lacking unity of invention by
the peer International Searching Authorities, a principle of the first
invention will be followed. This means that each main International
Searching Authority proceeds with the non-unity procedure according to
its own standard practice, while the provisional work products
submitted to the peer International Searching Authorities are based
only on the invention first mentioned in the claims as determined by
the main International Searching Authority. Peer examiners will focus
their searches on what they determine to be the first invention,
regardless of whether the provisional work products are directed to one
or more inventions.
Each peer International Searching Authority will transmit its
contribution to the main International Searching Authority using a
standard peer contribution form. Depending on its practice, each peer
International Searching Authority will either record its contribution
directly on the peer contribution form or use the peer contribution
form as a cover sheet for the standard forms PCT/ISA/210 and PCT/ISA/
237. Peer contribution forms and peer contributions attached to such
forms, if any, will be made available as separate documents in WIPO's
PATENTSCOPE.
The main International Searching Authority will consider the
contributions received from the peer International Searching
Authorities and prepare the final international search report (Form
PCT/ISA/210) (or, where appropriate, declaration of non-establishment
of international search report (Form PCT/ISA/203)) and written opinion
(Form PCT/ISA/237) in light of these contributions. The main
International Searching Authority will strive to establish these final
work products within the time limit under PCT Rule 42.1; however,
compliance with this time limit may not be guaranteed due to the
collaborative nature of the pilot project, which inherently results in
additional administrative burdens. The final work products will be
transmitted to the applicant and the International Bureau.
Final CS&E work products will be identified, either by a direct
indication in box V of Form PCT/ISA/237 or at the top of a supplemental
sheet referenced in said box, as the result of the collaboration under
the pilot, which does not necessarily reflect the opinions of all IP5
Offices. Only the final CS&E work product may serve as a basis for
requesting participation in a Patent Prosecution Highway (PPH) pilot
program.
All exchanges of documents and information among the IP5 Offices
will be carried out via an ePCT-based platform allowing a secure and
confidential data transmission. This ePCT-based platform is provided
and maintained by the International Bureau.
In this pilot project, the international search fee charged by each
IP5 Office remains unchanged. Therefore, applicants participating in
this pilot will pay only the standard fee for a PCT Chapter I search at
the chosen International Searching Authority. However, if following
this pilot the CS&E product is implemented as a regular product under
the PCT, applicants will have to pay a specific fee for such product
(the CS&E fee). The maximum prospective amount of the CS&E fee is the
aggregated amount of the search fees of the participating International
Searching Authorities plus an administrative fee to cover the
collaboration costs.
Towards the end of the pilot project, participating applicants will
be asked to complete a questionnaire about their interest for a regular
CS&E product under the PCT. Responses to the questionnaire will be
taken into account by the IP5 Offices in the assessment of the pilot
project.
[[Page 30147]]
III. Requirements and Limitations for Participation
Applicants who would like to participate in the pilot project must
be aware of both the following requirements to be met by applicants and
the following limitations set by the IP5 Offices.
A. Requirements To Be Met by Applicants
The following requirements must be met by applicants wishing to
participate in the pilot project:
(a) The request for participation in the pilot must be submitted on
the standard participation form and filed together with the
international application.
(b) The participation form and the international application must
be filed at the receiving Office of one of the IP5 Offices or at the
International Bureau as receiving Office, and the applicant must select
one of the IP5 Offices as the main International Searching Authority
under PCT Rule 35. For example, U.S. applicants filing with the USPTO
or the International Bureau as receiving Office may select the USPTO,
the EPO, the KIPO, or the JPO as International Searching Authority,
subject to certain limitations as described in the PCT Applicant's
Guide, Annex C/US.
(c) Where the participation form and the international application
are filed with the USPTO, they must be filed in electronic form via the
USPTO's EFS-Web system. The participation form must be loaded into EFS-
Web as a separate document using document description ``Request to
Participate in PCT CS&E Pilot.'' This is true even where the
participation form is prepared using WIPO's ePCT system since EFS-Web
only extracts the PCT Request form and Fee Calculation sheet from ePCT
or PCT Safe zip files.
(d) The participation form and the international application must
be filed in English when they are filed with the USPTO. As noted above,
the other IP5 Offices will initially only accept applications filed in
English and will announce when they are prepared to accept applications
in languages other than English.
B. Limitations Set by the IP5 Offices
The following limitations related to organizational aspects of the
pilot must be complied with for the main International Searching
Authority to accept a request for participation in the pilot:
(a) The applicant must not have had ten international applications
accepted in the pilot by the same main International Searching
Authority.
(b) The main International Searching Authority must not have
accepted 100 international applications into the pilot. The USPTO, in
its capacity as the main International Searching Authority, will accept
50 applications during the first year of the pilot, that is from July
1, 2018, to June 30, 2019, and 50 applications during the second year
of the pilot, that is from July 1, 2019, to June 30, 2020.
(c) The main International Searching Authority must not determine
that there is a defect in the application (e.g., the application does
not contain a sequence listing portion of the description and/or a copy
of a sequence listing in computer readable form as provided for in the
Administrative Instructions under the PCT) impeding the processing of
the application according to the timeline for the collaborative
process.
IV. Duration
The pilot project is divided into two phases, a preparatory phase
and an operational phase. The preparatory phase started on June 2,
2016, and was dedicated to the administrative and practical
preparations required for a smooth functioning of the pilot. The
operational phase will start on July 1, 2018, and will be dedicated to
the processing of applications under the collaborative scheme, the
monitoring of applications for evaluation purposes, and the assessment
of the outcome of the pilot. The operational phase will last for a
period of three years ending on July 1, 2021, and will include an
evaluation of the impact of the pilot on examination during the
subsequent national/regional stages. Requests for participation in the
pilot will be accepted only during the first two years of the
operational phase, i.e., from July 1, 2018, to June 30, 2020.
Dated: June 21, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2018-13800 Filed 6-26-18; 8:45 am]
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