The Expanded Collaborative Search Pilot
Recently, the United States Patent & Trademark Office (USPTO) expanded the Collaborative Search Pilot (CSP) program between the USPTO, the Japanese Patent Office (JPO), and the Korean Intellectual Property Office (KIPO).
What is the Collaborative Search Pilot (CSP) Program?
The program facilitates the combination of the searches conducted by patent examiners at the USPTO and JPO or KIPO before an Office Action is issued in a patent application participating in the pilot program. That is, examiners at both Offices conduct a prior art search and evaluate the results. Then, the search results are exchanged between the Offices, and the examiners re-evaluate their search results in light of the other Office’s search results. Once the re-evaluation of the search results is complete, examiners in each Office produce an Office Action which is provided to both the applicant and the other Office.
The recent expansion of the CSP program removes dependence on the First Action Interview program, incorporates references cited by the JPO or KIPO in the examination process which is reflected in the first Office Action, and limits claim correspondence to the independent claims in the participating applications.
Why Should I Participate?
You intend to file patent applications to protect an invention in multiple countries, and those countries include the U.S., Japan and/or South Korea – all of which participate in the CSP program. By combining the search efforts of the USPTO and JPO or KIPO, the pilot program aims to accelerate examination, provide more comprehensive prior art, and lead to more certainty in intellectual property rights by fostering greater consistency in examination across offices. Applications participating in the pilot are “made special” which means that they are taken up for examination out of turn. On average, these applications require fewer Office Actions to complete prosecution and have a higher allowance rate. In addition, participation in the pilot is free (only a petition is required).
I want to participate in the CSP program. How can I do so?
As noted above, a petition is required to submitted in the USPTO and JPO or KIPO to participate in the pilot. For the USPTO, the CSP petition form, “Petition to Make Special Under the Expanded Collaborative Search Pilot Program” (PTO/SB/437), can be submitted via EFS-Web or Patent Center. A corresponding petition in the JPO or KIPO must be filed within 15 days of the filing of the petition in the U.S. Your application must also conform to the following requirements: is a non-reissue, non-provisional utility application (or an international application that has entered the national stage); has a priority date of no earlier than March 16, 2013; and, has 3 or less independent claims, no more than 20 claims in total, and no multiple dependent claims (in the U.S.).
The CSP program has a limited number of slots available in each participating office, i.e., each participating office is limited to 400 slots/year. As of February 4, 2021, more than 75% of the pilot program slots were available in JPO and KIPO.