Collaborative Search Pilots (CSP)

April 2017

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BackgroundTrends Leading to Greater Work Sharing

BACKLOGS: Backlogs in offices around the world began to explode in the late 1990s

FILINGS: The number of applications filed in multiple offices also started to steadily increase

INEFFICIENCIES: Duplication of work over common patent applications

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Why Work Sharing?

Source: 2015 WIPO World Intellectual Property Indicators, p. 25.

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Why Work Sharing?Offices sought ways to re-use the search and examination results completed on related or cross-filed applications in an another Office to:

Minimize duplication of workEnhance examination efficiency and qualityDeliver real benefits to end users

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Why Work Sharing?Increase Quality

Multiple examiners searching an invention may increase search quality by sharing results

Reduce PendencyCollaborating with others or providing a better starting point can reduce time devoted to examination

Increase ConsistencyExaminers using same art often come to similar conclusions

Increase CertaintyApplicants can have more confidence in resulting work product

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Do you want:

Higher Likelihood of Enforceable Claims

Broadest Possible Claims with an Empty File Wrapper and let the

District Courts make the determination

or

Patent Prosecution Goals

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Collaborative Search Pilots (CSP)

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Collaborative Search PilotsTrends Leading to Greater Work Sharing

Pilots with JPO and KIPOParallel Pilots testing prosecution efficiencies taking different approaches to initial search and examination

JPO – Serial search on substantially similar claims prior to Pre Interview CommunicationKIPO – Parallel search on substantially similar claims

• KIPO’s search sent to applicant for consideration in response to Pre Interview Communication

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USPTO-JPO and USPTO-KIPOCollaborative Search Pilots

Characteristics of the Collaborative Search Pilots

Based on First Action Interview (FAI) Program:• Program bifurcates search from substantive examination• Designed to provide applicants with the examiner’s search results, followed by an

optional interview prior to the full examination of the claims• Limited to 3 independent claims, 20 total• JPO – Independent claims match; KIPO – All claims match

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USPTO-JPO and USPTO-KIPOCollaborative Search Pilots

Characteristics of the Collaborative Search PilotsApplicant Requirements:

• FREE Petition in USPTO (See JPO and KIPO for their entry requirements)

o Applicant consents to permit the USPTO and its partner offices to share information with partner offices under portions of 35 USC 122

(a) for sending search results from unpublished US Applications to foreign office

(c) & (e) for receiving foreign office search results and commentary in published US applications

Pilot Duration is Two Years

• JPO Pilot began August 1, 2015; KIPO Pilot began September 1, 2015

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Collaborative Search PilotsUSPTO-JPO

Corresponding applications must be filed in both the JPO and the USPTO no earlier than 3/16/13 and have not yet been examined.

Corresponding applications must be filed in both the KIPO and the USPTO no earlier than 3/16/13 and have not yet been examined.

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Collaborative Search PilotsUSPTO-JPO

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CSP Statistics

Data through April 30st , 2017

TC 1600 - Biotechnology and Organic ChemistryTC 1700 - Chemical and Materials EngineeringTC 2100 - Computer Architecture and SoftwareTC 2400 - Network, Multiplexing Cable, and SecurityTC 2600 - CommunicationsTC 2800 - Semiconductors/Memory, Optics/Photocopying,

Electrical Circuits & Systems and Printing/Measuring & TestingTC 3600 - Transportation, Construction, Agriculture, Electronic Commerce

and National SecurityTC 3700 - Mechanical Engineering, Manufacturing, and Medical

Devices/Processes

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Potential Benefits of CSPGreater consistency in examination across Offices leading to more certainty of IP rightsApplications will be taken out of turn resulting in expedited search results and final dispositionIt’s FREE to file a petitionPossible cost savings to applicant if prosecution is shortenedReduced issue in receiving foreign art during pendency of examination, requiring restarting examination or filing of RCE

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JPO/KIPO PCT US CSP

Examination most likely to have started in first office if long delay prior to second office filing. Use PPH if applicable.

Potential Filing StrategiesPCT Route

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Foreign or Provisional

PriorityPCT

JPO/KIPO

US

CSP

National-stage applications (e.g., 5 USC 371 filing) are eligible for CSP prosecution.

Potential Filing StrategiesPCT Route

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Potential Filing StrategiesNational Filing Route

Foreign or Provisional

Priority

JPO/KIPO

US

CSP

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CSP

US

JPO/KIPO

Because of accelerated initial examination, applications are receiving an action in both offices within several months of petition grant. This makes it possible to have search reports well within the 12 month Paris window for filing in other IP offices.

Potential Filing StrategiesNational Filing Route

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http://bit.ly/USPTO-CSP Scan or ClickQR Code

For more information please visit the CSP website or email USPTO at CSP@uspto.gov.

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