[Federal Register Volume 86, Number 22 (Thursday, February 4, 2021)]
[Notices]
[Pages 8183-8186]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-02342]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2020-0062]
Expanded Collaborative Search Pilot Program Extension
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) has
extended the Expanded Collaborative Search Pilot (CSP) program,
originally running from November 2017 through October 2020, an
additional two years. The Expanded CSP program, conducted with the
Japan Patent Office (JPO) and the Korean Intellectual Property Office
(KIPO), builds on the success of the initial CSP program, taking
advantage of improvements in patent quality and examination pendency.
With the Expanded CSP, 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. Each designated partner IP office independently conducts a
prior art search for its corresponding counterpart application. The
search results are then exchanged between the designated partner IP
office(s), including the USPTO, before any IP office issues an office
action. With 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. The Expanded CSP allows the USPTO to study the impact
on examination processes of exchanges of search results between the
USPTO and multiple partner IP offices prior to formulating and issuing
office actions.
DATES: Under the Expanded CSP, the USPTO and partner IP offices will
each continue to accept requests to participate beyond November 1,
2020, until October 31, 2022. 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 they deem it
appropriate. 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
Nelson Yang, Senior Advisor, International Patent Business Solutions,
Office of International Patent Cooperation, by phone at 571-272-0826.
Any inquiries regarding this pilot program can be emailed to
[email protected]. Inquiries concerning this notice may be directed to
Anthony Smith, Attorney-Advisor, International Patent Legal
Administration, by phone at 571-272-3298.
SUPPLEMENTARY INFORMATION:
I. Background
The USPTO is continually looking for ways to improve the quality of
issued patents and to promote worksharing with other IP offices
throughout the world. Worksharing 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 worksharing
pilot programs, including both the Initial and Expanded versions of CSP
with the JPO and the KIPO. In the Initial CSP, the participating
offices implemented administrative procedures to facilitate worksharing
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 Initial CSP and the current Expanded CSP showed
sufficiently positive benefits to justify extending the CSP an
additional two years to continue to permit worksharing between the
USPTO and more than one designated partner IP office for the
corresponding U.S. application.
The USPTO will continue to cooperate in the 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. The 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 remain the JPO and the 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
[[Page 8184]]
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 costs 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 is
modified for applications in the Expanded CSP so that a search will be
conducted and search results generated without issuance of an Office
action. The U.S. applications in the Expanded CSP are ``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 separated the
prior art search from the issuance of an Office action. The USPTO
determined that it is unnecessary to require applicants participating
in the Expanded CSP to use FAI procedures. Instead, applications in the
Expanded CSP are accorded special status before the first action on the
merits (FAOM), and prior art references provided through the exchange
of search results will be included in the FAOM.
In the United States, the Expanded CSP 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 worksharing program is
operating under a common framework across all agreements between the
USPTO and the partner offices, it is permissible to participate in the
Expanded CSP with multiple partner offices simultaneously, and the
program is open to adding more partner IP offices once appropriate
agreements are in place.
II. Overview of the Expanded CSP
An application must meet all the requirements set forth in section
III of this notice to be accepted into the 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 or Patent Center
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 aid the USPTO in quickly identifying participating applications.
Form PTO/SB/437 is available at www.uspto.gov/CollaborativeSearch. The
collection of information involved in this pilot program has been
reviewed and previously approved by OMB under control number 0651-0079,
and is available at OMB's Information Collection Review website,
www.reginfo.gov/public/do/PRAMain. The USPTO is not resubmitting the
0651-0079 information collection to OMB for its review and approval
because this notice does not affect the information collection
requirements associated with the information collection.
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 the 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 the Expanded CSP.
New patent applications are normally taken up for examination in
the order of their U.S. filing date. Applications accepted into the
Expanded CSP receive expedited processing by being granted special
status and taken out of turn until issuance of an FAOM, but they will
not maintain special status thereafter. Designated partner IP offices
and the USPTO share search results before the issuance of an initial
determination on patentability. Participants in the Expanded CSP should
review the references cited in each respective office's initial
determination on patentability. The references cited in the initial
search by any partner IP office will become of record in the USPTO
application and will be listed on Form PTO-892, and the examiner will
consider the references, thereby reducing the burden on the applicant
to file an Information Disclosure Statement (IDS). 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 IDS that
includes a copy of the initial determination on patentability, along
with copies of any missing or newly cited references in accordance with
37 CFR 1.97, 37 CFR 1.98, and the 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 the 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 the implementation of any
changes.
III. Requirements for Participation in the Expanded CSP
The following requirements must be satisfied for a petition under
the 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, where the effective filing date of any claimed invention is
no earlier than March 16, 2013. For corresponding counterpart
applications filed in accordance with the agreement between the USPTO
and the 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 or Patent Center. Form PTO/SB/437 is available
at www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. Based on the agreements 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
[[Page 8185]]
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 fee paid in the
application after the mailing of the decision on the petition to join
the 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 or
Patents Center 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 the 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 the Expanded CSP. The request for participation filed in the
corresponding counterpart application(s) for the Expanded CSP must be
granted by at least one of the designated partner IP offices in order
to participate in the 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'' when, 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 the 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 Expanded CSP.
IV. Treatment of a 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 the Expanded CSP.
If examination commences in either the U.S. application 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 the 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 a situation, the applicant may request
reconsideration, as discussed in item B, below.
A. Petition Grant by the 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 or Patent
Center.
[[Page 8186]]
B. Petition Dismissal by the 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 a 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 the 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 the Expanded CSP are written in such a way that they
claim a single, independent, and distinct invention. The applicant is
responsible for ensuring that the same invention is elected in both the
United States and all corresponding counterpart applications for
concurrent treatment in the 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 1.98. Search results that are not
received by the USPTO within four months from the date the petition was
granted 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 the Expanded CSP.
Andrew Hirshfeld,
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. 2021-02342 Filed 2-3-21; 8:45 am]
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