Notice2022-06602
Expanded Collaborative Search Pilot Program-New Combined Petition Option for Participation
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Published
March 29, 2022
Effective
March 29, 2022
Issuing agencies
Commerce DepartmentPatent and Trademark Office
Abstract
The United States Patent and Trademark Office (USPTO), in partnership with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO), have collaborated on a new petition option for participation in the Expanded Collaborative Search Pilot (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 one of the partner intellectual property (IP) offices rather than separate petitions in both partner IP offices. Enhancements include a more user-friendly layout, 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.
Full Text
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<title>Federal Register, Volume 87 Issue 60 (Tuesday, March 29, 2022)</title>
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[Federal Register Volume 87, Number 60 (Tuesday, March 29, 2022)]
[Notices]
[Pages 17995-17996]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-06602]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2022-0001]
Expanded Collaborative Search Pilot Program--New Combined
Petition Option for Participation
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO), in
partnership with the Japan Patent Office (JPO) and the Korean
Intellectual Property Office (KIPO), have collaborated on a new
petition option for participation in the Expanded Collaborative Search
Pilot (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 one of the partner
intellectual property (IP) offices rather than separate petitions in
both partner IP offices. Enhancements include a more user-friendly
layout, 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: The combined petition option and the related process will take
effect on March 29, 2022. Each IP office will continue to grant no more
than 400 requests per year per partner office for the duration of the
pilot, which is currently set to expire on October 31, 2022.
FOR FURTHER INFORMATION CONTACT: Inquiries regarding any specific
application participating in the pilot may be directed to Jessica
Patterson, Senior Advisor and Director, International Worksharing,
Planning, and Implementation; Office of International Patent
Cooperation; at 571-272-8828 or <a href="/cdn-cgi/l/email-protection#1d57786e6e747e7c334d7c6969786f6e72735d686e6d6972337a726b"><span class="__cf_email__" data-cfemail="7f351a0c0c161c1e512f1e0b0b1a0d0c10113f0a0c0f0b1051181009">[email protected]</span></a>. Any
inquiry regarding this pilot program and the petition process can be
emailed to <a href="/cdn-cgi/l/email-protection#4724343707323437332869202831"><span class="__cf_email__" data-cfemail="2142525161545251554e0f464e57">[email protected]</span></a>. Inquiries concerning this notice may be
directed to Michael Arguello; Management and Program Analyst;
International Worksharing, Planning, and Implementation; Office of
International Patent Cooperation; at 571-270-7876 or
<a href="/cdn-cgi/l/email-protection#dd90b4beb5bcb8b1f39cafbaa8b8b1b1b29da8aeada9b2f3bab2ab"><span class="__cf_email__" data-cfemail="8bc6e2e8e3eaeee7a5caf9ecfeeee7e7e4cbfef8fbffe4a5ece4fd">[email protected]</span></a>.
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 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 of 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 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 (JPO or KIPO) will result in receipt of the form at both offices
in the corresponding pilot and placement in the application files of
both counterpart applications.
The current petition option and process, in which an applicant
files a petition or a request separately with each partner IP office
(original petition option), remains available. Under the original
petition option, an applicant must submit petition form PTO/SB/437 to
the USPTO to request CSP participation for the U.S. application and 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 (JPO or 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 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 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 in a pilot program corresponds
to more than one counterpart application in a partner IP office, the
combined petition option cannot be used. In this situation, an
applicant must use the original petition option 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 the partner IP office. The
combined petition forms for the USPTO/JPO pilot and the USPTO/KIPO
pilot 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 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 at <a href="http://www.uspto.gov/CollaborativeSearch">www.uspto.gov/CollaborativeSearch</a>. The forms will also be available as Portable
Document Format (PDF) fillable forms in EFS-Web and Patent Center and
on the USPTO website at <a href="http://www.uspto.gov/patents/apply/forms/forms-patent-applications-filed-or-after-september-16-2012">www.uspto.gov/patents/apply/forms/forms-patent-applications-filed-or-after-september-16-2012</a>. 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,
<a href="http://www.reginfo.gov/public/do/PRAMain">www.reginfo.gov/public/do/PRAMain</a>. 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
[[Page 17996]]
PTO/437-KR) for each pilot the applicant wishes to utilize.
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 EFS-Web
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 from the counterpart application; a machine translation of
the claims is acceptable). The corresponding partner IP office will
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 office that received the filing must transmit the form and the
accompanying supporting documents, along with its date of receipt, to
the USPTO. The USPTO will 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 respective Memorandums of Cooperation between partner IP
offices.
Under the combined petition option, the IP partner 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 for both
applications prior to any examination in either office.
To the extent that the combined petition form forwarded to the
USPTO from the 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's electronic filing system (i.e., EFS-Web 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's 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's
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's 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
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. The combined petition form
also 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 IP partner 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 <a href="http://www.uspto.gov/CollaborativeSearch">www.uspto.gov/CollaborativeSearch</a>.
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-06602 Filed 3-28-22; 8:45 am]
BILLING CODE 3510-16-P
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