[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]


-----------------------------------------------------------------------

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.

-----------------------------------------------------------------------

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]
BILLING CODE 3510-16-P