[Federal Register Volume 88, Number 11 (Wednesday, January 18, 2023)]
[Notices]
[Pages 2892-2894]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-00799]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2022-0001]


Extension of, and New Combined Petition Option for Participation 
in, the Expanded Collaborative Search Pilot Program

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice.

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SUMMARY: To speed up patent examination and give applicants more 
comprehensive prior art by combining the search expertise of United 
States Patent and Trademark Office (USPTO), Japan Patent Office (JPO), 
and Korean Intellectual Property Office (KIPO) examiners before issuing 
a first Office action, the USPTO, in partnership with the JPO and the 
KIPO, is extending the Expanded Collaborative Search Pilot (CSP) 
program for an additional two years, through October 31, 2024. Requests 
to participate in the Expanded CSP program that were filed between

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October 31, 2022, and January 18, 2023, will be considered.
    In addition, the partner intellectual property (IP) offices have 
collaborated on a new petition option for participation in the Expanded 
CSP program. The new petition option, which has several enhancements 
compared to the current petition form and process, permits an applicant 
to file a combined petition in either the USPTO or one of the partner 
IP offices rather than separate petitions in each office. Enhancements 
include a more user-friendly layout, the addition of multilingual text, 
and a foundation for data collection that both satisfies the petition 
requirements and streamlines the process for partaking in the Expanded 
CSP program.

DATES: Pilot duration: The Expanded CSP program will continue until 
October 31, 2024. Each partner IP office will continue to grant no more 
than 400 requests per year per partner office for the duration of the 
pilot.
    New petition option applicability date: The combined petition 
option and the related process will take effect on January 18, 2023.

FOR FURTHER INFORMATION CONTACT: You may direct inquiries regarding any 
specific application participating in the pilot to Jessica Patterson; 
Senior Advisor and Director; International Worksharing, Planning, and 
Implementation; Office of International Patent Cooperation; at 571-272-
8828 or [email protected]. You may email any inquiry 
regarding this pilot program and the petition process to [email protected]. 
You may direct inquiries concerning this notice to Michael Arguello; 
Management and Program Analyst; International Worksharing, Planning, 
and Implementation; Office of International Patent Cooperation; at 571-
270-7876 or [email protected].

SUPPLEMENTARY INFORMATION:

I. Background

    The USPTO continually looks for ways to improve its worksharing 
pilot programs, including the Expanded CSP program. The Expanded CSP 
program provides applicants who cross-file with the USPTO and the JPO 
or the KIPO with search results from each partner IP office early in 
the examination process. It is designed to accelerate examination and 
provide the applicant with more comprehensive prior art by combining 
the search expertise of the USPTO and the JPO or the KIPO examiners 
before issuing a first Office action. For additional details about this 
program, see Expanded Collaborative Search Pilot Program Extension, 86 
FR 8183 (February 4, 2021) (Expanded CSP extension notice). Feedback 
from applicants based in the United States, Korea, and Japan has cited 
the petition process as an area for improvement, specifically the 
requirement to petition each partner IP office separately. As a result, 
the USPTO collaborated with its partner IP offices, the JPO and the 
KIPO, to develop combined petition forms (PTO/437-JP for the USPTO/JPO 
pilot program and PTO/437-KR for the USPTO/KIPO pilot program). 
Submitting a completed combined petition form to either the USPTO or 
the partner IP office (the JPO or the KIPO) will result in receipt of 
the form at both offices in the corresponding pilot program and 
placement in the application files of both counterpart applications.
    The current petition option and process, in which an applicant 
files a separate petition or a request with each partner IP office 
(original petition option), remains available. Under the original 
petition option, an applicant must submit petition form PTO/SB/437 
(without the JP or KR designation) to the USPTO to request CSP 
participation for the U.S. application and must make a separate 
submission to the partner IP office in the desired pilot to request CSP 
participation for a counterpart application.

II. Overview of the Combined Petition Option

    Applicants need only submit one combined petition form to the USPTO 
or the partner IP office (the JPO or the KIPO). There are separate 
agreements between the USPTO and the JPO and the USPTO and the KIPO. 
Therefore, to request participation in the corresponding pilot program 
between the USPTO and the JPO using this combined petition option, 
applicants must file the combined petition form PTO/437-JP with either 
the USPTO or the JPO. Likewise, to request participation in the 
corresponding pilot program between the USPTO and the KIPO using this 
combined petition option, applicants must file the combined petition 
form PTO/437-KR with either the USPTO or the KIPO. However, if an 
application corresponds to more than one application in a partner IP 
office, the combined petition option cannot be used. In this situation, 
an applicant must use the original petition option (form PTO/SB/437, 
without the JP or KR designation) to request participation in the 
Expanded CSP program.
    Under the combined petition option, use of the proper combined 
petition form will assist applicants in complying with the pilot 
program's requirements and will assist the USPTO in quickly identifying 
participating applications and their corresponding partner IP office. 
The combined petition forms for the USPTO/JPO pilot program and the 
USPTO/KIPO pilot program are multilingual. Both combined petition forms 
provide links to the requirements (with exceptions noted in section VI 
below) and conditions for entry into the respective pilot program for 
each partner IP office. 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.
    Forms PTO/437-JP and PTO/437-KR are available as Portable Document 
Format (PDF) fillable forms at the USPTO's CSP website at 
www.uspto.gov/CollaborativeSearch. The forms can also be accessed at 
the USPTO website at www.uspto.gov/PatentForms. The Office of 
Management and Budget (OMB) has reviewed and approved the collection of 
information involved in this pilot program, under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501 et seq.), as part of a collection 
identified by OMB control number 0651-0079. Collection 0651-0079 is 
available at OMB's Information Collection Review website, 
www.reginfo.gov/public/do/PRAMain. No fee for the combined petition to 
make special under 37 CFR 1.102 is required for participation in the 
Expanded CSP program.

III. Filing a Combined Petition Form

    If opting to use a combined petition form, applicants must file a 
completed combined petition form (PTO/437-JP or PTO/437-KR) for each 
pilot program in which the applicant wishes to participate.
    Combined petition form PTO/437-JP must either be directly filed in 
the U.S. application or directly with the JPO for the USPTO/JPO pilot 
program, and combined petition form PTO/437-KR must either be directly 
filed in the U.S. application or directly with the KIPO for the USPTO/
KIPO pilot program. If the combined petition form is directly filed in 
the U.S. application, the applicant must file it using either USPTO 
filing system(s) or Patent Center. If the applicant directly files the 
combined petition form with the partner IP office, the combined 
petition form must be accompanied by supporting documents (e.g., an 
English translation of the claims of the application filed in the 
partner IP office; a machine translation of the claims is acceptable). 
The corresponding partner IP office will

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then transmit the combined petition form and supporting documents to 
the USPTO. The applicant should not file the combined petition form 
directly with both the USPTO and the corresponding partner IP office.
    Based on the agreements between the USPTO and the partner IP 
offices, if the applicant directly files the combined petition form 
with the USPTO, then the USPTO must transmit the completed form and any 
accompanying supporting documents, along with the date of receipt, to 
the corresponding partner IP office. Additionally, if the applicant 
files the combined petition form directly with the JPO or the KIPO, 
then the partner IP office that receives the filing must transmit the 
form and the accompanying supporting documents, along with its date of 
receipt, to the USPTO. The USPTO will then place the combined petition 
form and the accompanying supporting documents in the file of the U.S. 
application. Incomplete combined petition forms will not be forwarded 
to the corresponding partner IP office and will be dismissed in 
accordance with the Memorandums of Cooperation between the USPTO and 
the respective partner IP offices.
    Under the combined petition option, the partner IP offices have 
agreed to transmit the combined petition form to the corresponding 
partner IP office within 15 days of receipt from the applicant. This 
reduces the risk of the counterpart application being acted upon by an 
examiner in the partner IP office before that application enters the 
pilot program, which would result in both applications being denied 
entry into the Expanded CSP program. The request for participation in 
the Expanded CSP program must be granted by both the IP office in which 
the request is directly filed and the partner IP office prior to any 
examination of the counterpart applications in either office.
    To the extent that the combined petition form forwarded to the 
USPTO from a partner IP office does not comply with the requirements of 
37 CFR 1.4(d)(2) and (d)(3), and 1.6(a), these requirements are waived 
for certain elements. Specifically, with respect to 37 CFR 1.4(d)(2), a 
forwarded combined petition form containing an S-signature will not be 
required to be filed by facsimile transmission, via the USPTO patent 
electronic filing system (i.e., USPTO filing system(s) or Patent 
Center), or on paper. With respect to 37 CFR 1.4(d)(3), a forwarded 
combined petition form containing a graphic representation of a 
handwritten signature or an S-signature will not be required to be 
filed via the USPTO patent electronic filing system. With respect to 37 
CFR 1.6(a), a forwarded combined petition form will be accorded a 
receipt date even though it was not received at the USPTO by mail, 
filed via the USPTO patent electronic filing system, or hand-delivered 
to the USPTO. The U.S. receipt date of the combined petition form will 
either be the actual date that the combined petition form is received 
at the USPTO via the USPTO patent electronic filing system or the date 
the combined petition form is transmitted to the USPTO from the partner 
IP office, which may not be the same as the receipt date in the partner 
IP office.

IV. Requirements for Participation in the Expanded CSP

    To be accepted into the Expanded CSP program, applicants who use 
the combined petition option must meet all the requirements of the 
pilot program that are set forth in section III of the Expanded CSP 
extension notice, except with the following modifications.
    Under the combined petition option, the combined petition form PTO/
437-JP or PTO/437-KR must be used instead of form PTO/SB/437, and the 
combined petition form, as discussed above, must be submitted to either 
the USPTO or the partner IP office (the JPO or the KIPO). Separate 
petitions are not required to be filed in both the USPTO and the 
partner IP office. The combined petition form PTO/437-JP or PTO/437-KR 
also includes an express written consent under 35 U.S.C. 122(c) for the 
USPTO to receive the combined petition form (if filed directly with the 
corresponding partner IP office) and to accept and consider prior art 
references and comments from the designated partner IP office during 
the examination of the U.S. application. In addition, the combined 
petition form includes written authorization for the USPTO to forward 
the form (if filed directly with the USPTO) to the corresponding 
partner IP office and to provide to the designated partner IP office, 
before a first Office action on the merits, 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). No other consents are 
required.

V. Treatment of a Combined Petition Form

    The combined petition form filed directly or indirectly in the U.S. 
application will be treated in the manner set forth in section IV of 
the Expanded CSP extension notice.

VI. Requirement for Restriction

    The requirement for restriction set forth in section V of the 
Expanded CSP extension notice remains the same for the combined 
petition option.

VII. First Action on the Merits

    Under the Expanded CSP program, the USPTO examiner will consider 
all exchanged search results. However, search results that are not 
received by the USPTO within four months from the date the USPTO 
granted the petition may not be included in the first action on the 
merits (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 program.
    The USPTO will continue to cooperate with applicants, IP 
stakeholders, and partner IP offices to improve the CSP process. More 
information on the CSP is available at www.uspto.gov/CollaborativeSearch.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-00799 Filed 1-17-23; 8:45 am]
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