By , Date: Oct 30, 2015 in Newsletter, Noteworthy, Patent Noteworthy, Patent Publications, Publications Email This Post Email This Post | Print This Post Print This Post |

Enhancing the Quality of your Client’s Global Patent Portfolio by use of Collaborative Search Programs


Jay Pattumudi

© 2015 Bruzga & Associates

Have you ever filed an application in the U.S., obtained allowance of the claims, and then had those same claims rejected in Japan or Korea under newly cited prior art? If so, the following discussed Collaborative Search Pilot Programs (CSP) with Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO) will be of interest, but you will have to apply soon!

Recently, USPTO announced respective collaborative search programs with JPO and KIPO. Each program will promote harmonization of search results and therefore provide greater benefits for an applicant filing an application in the U.S., which has a counterpart application examined by JPO or KIPO. The following explains key differences between the two Collaborative Search Pilot Programs.

Under the Collaborative Search Pilot Program with JPO, JPO and USPTO will exchange prior art search and evaluation results with each other and provide a work product that incorporates the efforts of the two offices.[1] One of those offices will be deemed “an office of first search,” depending on whether the application has an earlier U.S. or Japanese priority date.[2] If the USPTO is the “office of first search,” the USPTO issues a communication to the applicant regarding patentability.[3] Thus, due to the collaboration of search results between the two offices, examiners will have a more comprehensive set of references before them for making their initial patentability determinations.

Under the Collaborative Search Pilot Program with KIPO, KIPO and USPTO will conduct their respective prior art searches and provide both work products to an applicant for consideration.[4] Unlike the foregoing program with JPO, KIPO and USPTO conduct independent examinations of the claimed invention without necessarily considering the results of the other office respectively. Notwithstanding the foregoing fact, an applicant, by receiving the prior art search results, can appropriately determine the next step in prosecution in the U.S., such as filing an information disclosure statement citing the results provided by KIPO.

Key requirements for the respective Collaborative Search Pilot Program (CSP) with JPO or KIPO include the following: (1) application should be unexamined in both offices before filing a request for CSP; (2) an application must have an earliest effective filing date of March 16, 2013 or later and be either a non-provisional application filed under 35 U.S.C. § 111(a) or an international application that has entered national stage in the U.S.; (3) the U.S. application and the counterpart application must have a common earliest priority date of March 16, 2013 or later; (4) applicant must provide a claim correspondence table indicating which independent claims between the U.S. and the counterpart application have a substantially corresponding scope to each other; (5) an application should include no more than three independent claims and 20 total claims, all of which must be directed to the same invention; and (6) applicant must consent to have USPTO and JPO or KIPO share information under 35 U.S.C. § 122.[5]

In addition, pertinent requirements of another program, the First Action Interview Pilot Program, apply to both Collaborative Search Pilot Programs, where the USPTO is the “first office of first search,” as mentioned earlier. Under the First Action Interview program, an applicant receives a communication, i.e., “a pre-Interview Communication,” from the USPTO providing the results of a prior art search conducted by the examiner. An applicant is allowed to have an interview with the examiner before an office action has issued. The applicant has to respond to the Pre-Interview Communication by adopting one of three following options: (1) file a request not to have a first action interview; (2) file a response to the pre-Interview communication; or (3) request an interview with the examiner.[6]

Finally, for each respective Collaborative Search Pilot Program with USPTO, USPTO will accept 200 applications and the counterpart office will accept 200 applications,[7] so apply soon!

It remains to be seen what long-standing impact that the Collaborative Search Pilot Programs with JPO and KIPO will have. In either case, applicants are benefited by having claims that are of potentially greater validity. Traditionally, for example, an applicant may obtain allowance of claims in the U.S. and have the same claims rejected in JPO or KIPO. This would require an applicant to file a reissue patent application narrowing the scope of claims issued in the U.S. The Collaborative Search Pilot Programs would help applicants avoid that mentioned situation. In addition, competitors are less likely to have a basis for challenging patent claim validity in a post-issuance AIA trial proceeding before the Patent Trial and Appellate Board or at the federal district court level.

Note: This commentary focuses on the Collaborative Search Programs from the U.S. perspective only and does not represent legal advice. It is merely a summary of general points about the Collaborative Search Pilot Programs with Japan Patent Office (JPO) and with Korean Intellectual Property Office (KIPO).

[1] Collaborative Search Pilot Program, United States Patent and Trademark Office, http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp (last visited October 16, 2015).

[2] United States Patent and Trademark Office and Japan Patent Office Collaborative Search Pilot Program, 80 Fed. Reg. 39752, 39756 (July 10, 2015).

[3] Id. at 39753.

[4] United States Patent and Trademark Office and Korean Intellectual Property Office Collaborative Search Pilot Program, 80 Fed. Reg. 39412 (July 9, 2015); Collaborative Search Pilot Program, supra note 1.

[5] United States Patent and Trademark Office and Japan Patent Office Collaborative Search Pilot Program, 80 Fed. Reg. at 39754; United States Patent and Trademark Office and Korean Intellectual Property Office Collaborative Search Pilot Program, 80 Fed. Reg. at 39413–14.

[6] United States Patent and Trademark Office and Japan Patent Office Collaborative Search Pilot Program, 80 Fed. Reg. at 39757–58; United States Patent and Trademark Office and Korean Intellectual Property Office Collaborative Search Pilot Program, 80 Fed. Reg. at 39415–16.

[7] Collaborative Search Pilot Program, supra note 1.