Expanded Collaborative Search Pilot Program-New Combined Petition Option for Participation, 17995-17996 [2022-06602]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 87, Number 60 (Tuesday, March 29, 2022)]
[Notices]
[Pages 17995-17996]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[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 [email protected]. Any 
inquiry regarding this pilot program and the petition process can be 
emailed to [email protected]. 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 
[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 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 www.uspto.gov/CollaborativeSearch. 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 www.uspto.gov/patents/apply/forms/forms-patent-applications-filed-or-after-september-16-2012. 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

[[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 www.uspto.gov/CollaborativeSearch.

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]
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