[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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