Expanded Collaborative Search Pilot Program – New Combined Petition Option For ParticipationMarch 30, 2022

Yesterday, March 29, 2022, the USPTO published a notice on the Federal Register, announcing it is making it easier to participate in the Expanded Collaborative Search Pilot (CSP) program. Specifically, the USPTO collaborated with its counterpart offices, the Japan Patent Office (JPO) and the Korea Intellectual Property Office (KIPO), to develop a combined petition form that needs to be filed in only one of the partner intellectual property offices, rather than a separate petition in both partner IP offices. Applicants wishing to take advantage of the benefits of the expanded CSP need to have unexamined corresponding counterpart applications in the USPTO and either/both KIPO and JPO.

The expanded Collaborative Search Pilot provides applicants who cross-file their patent applications internationally with search results from multiple offices 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 examiners at the USPTO and the Japan Patent Office or the Korean Intellectual Property Office before issuing a first office action. Benefits include:

  • Greater consistency in examination across offices leading to more certainty of IP rights.
  • Applications will be taken out of turn resulting in expedited first action on merits.
  • Combined search expertise provides more comprehensive prior art.
  • Collaborative examination requires fewer office actions to complete prosecution (on average, compared to non-CSP applications).
  • And it’s FREE to file a petition for your application.

Other aspects of the program remain largely unchanged. For example, to participate in the pilot program, USPTO Applicants still have to meet the following requirements:

  • The application must contain three (3) or fewer independent claims and twenty (20) or fewer total claims and must not contain any multiple dependent claims;
  • Applicant will not request a refund of the search fee and any excess claims fee paid in the application after the mailing or notification of the decision on the petition to join Expanded CSP;
  • Applicant will make an election without traverse (express or constructive) if the Office determines that the claims are not directed to a single invention;
  • Applicant will provide a translation of all corresponding claims if the corresponding counterpart application(s) are not published in English. A machine language translation is sufficient;
  • All submissions for the participating application must be filed via EFS-Web; and
  • 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) (a similar requirement exists for using the Global Patent Prosecution Highway, also known as the GPPH).

Complying with of these requirements can permanently alter the course of examination. Strategically, whether or not it is a good idea to make use of this specific pilot is application-specific. Therefore, should you have any questions surrounding this program or any other USPTO program, please consult an MVS attorney.

Gregory Lars Gunnerson is a Intellectual Property Attorney in the Mechanical and Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Lars directly via email at gregory.gunnerson@ipmvs.com.

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