| PCT, International Applications |
Referenced Items (377, 378, 379, 380, 381, 382, 383, 384, 385, 386, 387, 388, 389, 390, 391, 392, 393, 394, 395, 396, 397, 398, 399, 400, 401, 402) |
(377) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2018-0032]
Patent Cooperation Treaty Collaborative Search and Examination
Pilot Project between the IP5 Offices
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO), the
European Patent Office (EPO), the Japan Patent Office (JPO), the Korean
Intellectual Property Office (KIPO) and the State Intellectual Property
Office of the People's Republic of China (SIPO), referred to collectively
as the IP5 Offices, will launch a pilot project on Collaborative Search and
Examination (CS&E) under the Patent Cooperation Treaty (PCT). This will be
the third such pilot. The USPTO, the EPO, and the KIPO conducted two
previous pilots in 2010 and in 2011-2012. The third pilot is needed to
further develop and test the concept amongst all the IP5 Offices. In
particular, this IP5 pilot project aims at assessing user interest for a
CS&E product and the expected efficiency gains for the IP5 Offices.
DATES: Effective date: July 1, 2018.
Duration: Requests to participate in the PCT CS&E pilot project may be
filed with international applications filed through the receiving Office of
one of the IP5 Offices or the International Bureau of the World
Intellectual Property Organization (WIPO) until June 30, 2020. During each
year, the USPTO, in its capacity as the main International Searching
Authority, will accept a total of 50 international applications into the
pilot.
FOR FURTHER INFORMATION CONTACT: Inquiries regarding the handling of any
specific application participating in the pilot may be directed to Daniel
Hunter, Director of International Work Sharing, Planning, and
Implementation, Office of International Patent Cooperation, by telephone at
(571) 272-8050 or by email to daniel.hunter@uspto.gov. Inquiries concerning
this notice may be directed to Michael Neas, Deputy Director, International
Patent Legal Administration, by phone (571) 272-3289 or by email to
michael.neas@uspto.gov.
SUPPLEMENTARY INFORMATION:
I. Concept
The concept of CS&E under the PCT refers to the collaboration of
examiners from different International Searching Authorities in different
regions and with different working languages on one international
application for the establishment of an international search report and
written opinion under PCT Chapter I, which, although remaining the opinion
of the chosen International Search Authority, is based on contributions
from all participating IP5 Offices.
Under the pilot project, the examiner of the IP5 Office from the chosen
International Searching Authority under PCT Rule 35 for a given
international application ("the main examiner") works on the application by
conducting the search and examination and by establishing a provisional
international search report and written opinion. These provisional work
products are transmitted to examiners from the other participating IP5
Offices in their capacity as an International Searching Authority ("the
peer examiners"). Each peer examiner provides the main examiner with his
contribution, in light of the provisional international search report and
written opinion. The final international search report and written opinion
are subsequently established by the main examiner after having taken into
consideration the contributions of the peer examiners. Further details
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regarding the implementation of the CS&E concept within the framework of
this pilot project are provided below.
II. Framework
Under the pilot project, with a view to assessing the users' interest
for a CS&E product, international applications processed under the
collaborative scheme will be selected by applicants ("applicant-driven
approach"), whereas, under the two previous pilot projects, the
applications were selected by the participating IP5 Offices.
Applicants wishing to participate in the pilot project must submit a
request for participation in the pilot on a standard participation form and
file it together with the international application at the receiving Office
of one of the IP5 Offices or the International Bureau. The participation
form is available in all official languages of the IP5 Offices on WIPO's
website at http://www.wipo.int/pct/en/filing/cse.html.
For international applications filed in English, requests for
participation in the pilot may be filed beginning July 1, 2018. Each
applicant will be able to select only a limited number of international
applications for inclusion in the program.
Initially, only international applications filed in English will be
accepted into the pilot. Eventually, international authorities that work in
languages other than English will accept international applications filed
in those languages into the pilot. Each main International Searching
Authority that will accept international applications filed in a language
other than English will inform the applicants accordingly by a
communication published on its website. Such communication will specify the
additional languages that will be accepted by a main International
Searching Authority for the purposes of this pilot and the date as of which
requests for participation in the pilot may be filed in such languages. The
USPTO in its capacity as an International Searching Authority only accepts
applications in English.
The receiving Office will transmit the participation form to the
International Bureau and the main International Searching Authority as part
of the record copy and search copy, respectively. Upon receipt of the
search copy, the main International Searching Authority will determine if
the request for participation in the pilot may be accepted based on whether
the applicable requirements detailed below in part III are met. The
International Searching Authority will notify the applicant and the
International Bureau of the acceptance or refusal of the request for
participation in the pilot using Form PCT/ISA/224 (Communication in Cases
for Which No Other Form Is Applicable).
The main International Searching Authority will perform the search and
examination as it would for any other international application not
processed under this pilot. It will establish a provisional international
search report (Form PCT/ISA/210) (or, where appropriate, declaration of
non-establishment of international search report (Form PCT/ISA/203)) and
written opinion (Form PCT/ISA/237), and, where applicable, a record of the
search strategy. The form and content of the record of the search strategy
will generally be according to the current practice of each International
Searching Authority.
The main International Searching Authority will transmit the above
mentioned provisional work products to the peer International Searching
Authorities, where a peer examiner will prepare a contribution to the final
work product, taking into consideration the provisional work products
prepared by the main International Searching Authority and performing
additional searching to the extent deemed necessary.
With respect to the handling of cases lacking unity of invention by the
peer International Searching Authorities, a principle of the first
invention will be followed. This means that each main International
Searching Authority proceeds with the non-unity procedure according to its
own standard practice, while the provisional work products submitted to the
peer International Searching Authorities are based only on the invention
first mentioned in the claims as determined by the main International
Searching Authority. Peer examiners will focus their searches on what they
determine to be the first invention, regardless of whether the provisional
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work products are directed to one or more inventions.
Each peer International Searching Authority will transmit its
contribution to the main International Searching Authority using a standard
peer contribution form. Depending on its practice, each peer International
Searching Authority will either record its contribution directly on the
peer contribution form or use the peer contribution form as a cover sheet
for the standard forms PCT/ISA/210 and PCT/ISA/237. Peer contribution forms
and peer contributions attached to such forms, if any, will be made
available as separate documents in WIPO's PATENTSCOPE.
The main International Searching Authority will consider the
contributions received from the peer International Searching Authorities
and prepare the final international search report (Form PCT/ISA/210) (or,
where appropriate, declaration of non-establishment of international search
report (Form PCT/ISA/203)) and written opinion (Form PCT/ISA/237) in light
of these contributions. The main International Searching Authority will
strive to establish these final work products within the time limit under
PCT Rule 42.1; however, compliance with this time limit may not be
guaranteed due to the collaborative nature of the pilot project, which
inherently results in additional administrative burdens. The final work
products will be transmitted to the applicant and the International Bureau.
Final CS&E work products will be identified, either by a direct
indication in box V of Form PCT/ISA/237 or at the top of a supplemental
sheet referenced in said box, as the result of the collaboration under the
pilot, which does not necessarily reflect the opinions of all IP5 Offices.
Only the final CS&E work product may serve as a basis for requesting
participation in a Patent Prosecution Highway (PPH) pilot program.
All exchanges of documents and information among the IP5 Offices will be
carried out via an ePCT-based platform allowing a secure and confidential
data transmission. This ePCT-based platform is provided and maintained by
the International Bureau.
In this pilot project, the international search fee charged by each IP5
Office remains unchanged. Therefore, applicants participating in this pilot
will pay only the standard fee for a PCT Chapter I search at the chosen
International Searching Authority. However, if following this pilot the
CS&E product is implemented as a regular product under the PCT, applicants
will have to pay a specific fee for such product (the CS&E fee). The
maximum prospective amount of the CS&E fee is the aggregated amount of the
search fees of the participating International Searching Authorities plus
an administrative fee to cover the collaboration costs.
Towards the end of the pilot project, participating applicants will be
asked to complete a questionnaire about their interest for a regular CS&E
product under the PCT. Responses to the questionnaire will be taken into
account by the IP5 Offices in the assessment of the pilot project.
III. Requirements and limitations for participation
Applicants who would like to participate in the pilot project must be
aware of both the following requirements to be met by applicants and the
following limitations set by the IP5 Offices.
A. Requirements to be met by applicants
The following requirements must be met by applicants wishing to
participate in the pilot project:
(a) The request for participation in the pilot must be submitted on the
standard participation form and filed together with the international
application.
(b) The participation form and the international application must be
filed at the receiving Office of one of the IP5 Offices or at the
International Bureau as receiving Office, and the applicant must select one
of the IP5 Offices as the main International Searching Authority under PCT
Rule 35. For example, U.S. applicants filing with the USPTO or the
International Bureau as receiving Office may select the USPTO, the EPO, the
KIPO, or the JPO as International Searching Authority, subject to certain
limitations as described in the PCT Applicant's Guide, Annex C/US.
(c) Where the participation form and the international application are
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filed with the USPTO, they must be filed in electronic form via the USPTO's
EFS-Web system. The participation form must be loaded into EFS-Web as a
separate document using document description "Request to Participate in PCT
CS&E Pilot." This is true even where the participation form is prepared
using WIPO's ePCT system since EFS-Web only extracts the PCT Request form
and Fee Calculation sheet from ePCT or PCT Safe zip files.
(d) The participation form and the international application must be
filed in English when they are filed with the USPTO. As noted above, the
other IP5 Offices will initially only accept applications filed in English
and will announce when they are prepared to accept applications in
languages other than English.
B. Limitations set by the IP5 Offices
The following limitations related to organizational aspects of the pilot
must be complied with for the main International Searching Authority to
accept a request for participation in the pilot:
(a) The applicant must not have had ten international applications
accepted in the pilot by the same main International Searching Authority.
(b) The main International Searching Authority must not have accepted
100 international applications into the pilot. The USPTO, in its capacity
as the main International Searching Authority, will accept 50 applications
during the first year of the pilot, that is from July 1, 2018, to June 30,
2019, and 50 applications during the second year of the pilot, that is from
July 1, 2019, to June 30, 2020.
(c) The main International Searching Authority must not determine that
there is a defect in the application (e.g., the application does not
contain a sequence listing portion of the description and/or a copy of a
sequence listing in computer readable form as provided for in the
Administrative Instructions under the PCT) impeding the processing of the
application according to the timeline for the collaborative process.
IV. Duration
The pilot project is divided into two phases, a preparatory phase and an
operational phase. The preparatory phase started on June 2, 2016, and was
dedicated to the administrative and practical preparations required for a
smooth functioning of the pilot. The operational phase will start on
July 1, 2018, and will be dedicated to the processing of applications under
the collaborative scheme, the monitoring of applications for evaluation
purposes, and the assessment of the outcome of the pilot. The operational
phase will last for a period of three years ending on July 1, 2021, and
will include an evaluation of the impact of the pilot on examination during
the subsequent national/regional stages. Requests for participation in the
pilot will be accepted only during the first two years of the operational
phase, i.e., from July 1, 2018, to June 30, 2020.
June 21, 2018 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1452 OG 274]