(265) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2016-0013]
Elimination of Publication Requirement
in the Collaborative Search Pilot Program
Between the Japan Patent Office and the
United States Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO) implemented
a Collaborative Search Pilot Program with the Japan Patent Office (JPO) on
August 1, 2015, to study whether the exchange of search results between
offices for corresponding counterpart applications improves patent quality
and facilitates the examination of patent applications in both offices.
Based upon feedback from the public, the USPTO is modifying the
Collaborative Search Pilot Program between JPO and USPTO (JPO-CSP) by
removing the requirement that the applications must be published in order
to participate in the pilot program. The JPO and USPTO have determined that
publication of the applications is unnecessary for participation in the
pilot program and that unpublished applications can participate in the
pilot program as long as applicants grant access to the unpublished
application and provide a translated copy of the currently pending claims
from the corresponding counterpart application(s). Accordingly, publication
of an application will no longer be a prerequisite for participation in the
JPO-CSP as of the effective date of this notice. Instead, if unpublished,
applicant must provide an authorization of access to the unpublished
application and submit a translation of the currently pending claims from
the corresponding counterpart application(s). These modifications should
permit more applications to qualify for the program, supporting the
program's study of the efficacy of exchanging search results between
corresponding counterpart applications to improve patent quality and
facilitate examination.
DATES: Effective Date: August 1, 2016.
Duration: Under this pilot program, the USPTO and JPO will continue to
accept petitions to participate until August 1, 2017, two years from the
original effective date of the program (August 1, 2015). During each year,
the pilot program will be limited to 400 granted petitions, 200 granted
petitions where USPTO performs the first search and JPO performs the second
search, and 200 granted petitions where JPO performs the first search and
USPTO performs the second search. The offices may extend the pilot program
(with or without modification) for an additional amount of time, if
necessary. The offices reserve the right to terminate the pilot program at
any time.
FOR FURTHER INFORMATION CONTACT: Daniel Hunter, Director of International
Work Sharing, Planning and Implementation, Office of International Patent
Cooperation by telephone at (571) 272-8050 regarding the handling of any
specific application participating in the pilot. Any questions concerning
this notice may be directed to Joseph Weiss, Senior Legal Advisor, Office
of Patent Legal Administration by telephone at (571) 272-7759. Any
inquiries regarding this pilot program can be emailed to
wspilots@uspto.gov.
SUPPLEMENTARY INFORMATION: The USPTO published a notice to implement a
joint work sharing initiative, a Collaborative Search Pilot Program,
between JPO and USPTO on July 10, 2015. See United States Patent and
Trademark Office and Japan Patent Office Collaborative Search Pilot
Program, 80 FR 39752 (July 10, 2015), 1417 Off. Gaz. Pat. Office 68
(August 4, 2015) (JPO-CSP Notice). The JPO-CSP Notice indicated that an
applicant can request, via petition to make special, to have an application
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advanced out of turn (accorded special status) for examination, if the
application was published and satisfied other requirements specified in the
JPO-CSP Notice. The pilot program is designed to ensure the applications
are contemporaneously examined so that examiners from both offices have a
more comprehensive set of references along with corresponding claim sets
before them when making initial patentability determinations. The USPTO has
received feedback and suggestions from stakeholders regarding the pilot
program's design.
Under the JPO-CSP as originally implemented, each office conducted a
prior art search for its corresponding counterpart application and then
exchanged the search results with the other office before either office
issued a communication to the applicant regarding patentability. As a
result of this exchange of search results, the examiners in both offices
had a more comprehensive set of references before them when making their
initial patentability determinations. As only published applications were
permitted, examiners also had access to the currently pending claims of
both applications.
The USPTO and JPO have determined that the publication requirement in
the JPO-CSP Notice is unnecessary as long as the petition authorizes access
to the unpublished application and includes a translation of the currently
pending claims from the corresponding counterpart application(s).
Accordingly, the USPTO is modifying the JPO-CSP to remove the publication
requirement and instead require the applicant to authorize access to the
application and at least a machine translation of the currently pending
claims from the corresponding counterpart application(s).
To participate in the pilot program, applicants should now use Form
PTO/SB/437JP-U, which is available at
http://www.uspto.gov/patent/patents-forms, when filing a petition to make
special under this pilot program satisfying all other requirements set
forth in the JPO-CSP Notice. Requirements (1)-(3) set forth in Part III of
the original JPO-CSP Notice of August 1, 2015, are modified by this notice
to reflect the modifications discussed above. They are now as follows:
(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(c)
with an effective filing date no earlier than March 16, 2013. The U.S.
application and the corresponding JPO counterpart application must have a
common earliest priority date that is no earlier than March 16, 2013.
(2) A completed petition form PTO/SB/437JP-U must be filed in the
application via EFS-web. Form PTO/SB/437JP-U is available at
http://www.uspto.gov/patent/patents-forms. If the application is
unpublished the petition must include a translated copy of the currently
pending claims from the corresponding counterpart application(s). A machine
translation is acceptable.
(3) The petition submission must include an express written consent
under 35 U.S.C. 122(c) for the USPTO to receive prior art references and
comments from the JPO that will be considered during the examination of the
U.S. application participating in this JPO Work Sharing Pilot Program. The
petition also must provide written authorization for the USPTO to provide
JPO access to the participating U.S. application's bibliographic data and
search reports in accordance with 35 U.S.C. 122(a) and 37 CFR 1.14(c). Form
PTO/SB/437JP-U includes language compliant with the consent requirement(s)
for this pilot program.
All other requirements and provisions set forth in the JPO-CSP Notice
remain unchanged. Please see the JPO-CSP Notice for more information on the
program.
June 28, 2016 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
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