As announced May 21, 2015, the USPTO will be entering into two pilot programs, one with the JPO and another with the KIPO. On July 9, 2015, Federal Register Notices were posted for each of the two programs.
The goal of these programs is to determine whether a collaborative search for commonly filed applications can uncover better prior art and lead to more consistent results between Offices. Currently, the Patent Prosecution Highway (PPH) permits claims previously allowed in an Office of earlier filing to undergo accelerated examination in an Office of later filing. However, under the PPH, only the Office of later filing benefits from the prior examination, and the consistency of the examination results are not necessarily guaranteed. The new pilot programs are predicated on these bases.
The JPO-USPTO pilot begins August 1, 2015, and the KIPO-USPTO pilot begins September 1, 2015. Petitions will be accepted starting on these respective start dates. Each program will accept 200 applications per Office per year (both programs will run for two years with the option to extend). Due to the differences in the programs, Applications are not eligible to participate in both programs.
Eligibility requirements include:
· a maximum of 3 independent claims and 20 claims total;
· unity of invention;
· correspondence between the claims in each Office;
· the earliest priority date must be post-AIA;
· the Application must be unexamined in both Offices; the Petition (Form PTO/SB/437JP or PTO/SB/437KR) to participate in the program must be granted in both Offices (petition to make special fee is waived for the pilot programs);
· the petition must include an express written consent under 35 U.S.C. § 122(c) for the USPTO to receive prior art and comments from the JPO or KIPO; and
· all submissions must be filed via EFS-Web.
If any of the above requirements are not met, the USPTO will notify the Applicants of the deficiency, and the Applicants will be given a single opportunity to correct the deficiency. The period for reply to such a notice is the longer of one month or thirty days and is not extendable.
If the Examiner determines that not all of the claims presented are directed to a single invention, the Examiner will follow telephone restriction practices, and the Applicants must make an election without traverse during the telephonic interview.
(A) USPTO-JPO Program
In the program between the USPTO and the JPO, the information exchange happens prior to the Examiner fully forming the FAI based search report so that the FAI search contains both Offices’ input. The filing date of the respective USPTO and JPO Applications will determine which Office is the Office of first search. If the filing dates are the same, then the Office of first search will be determined as agreed to by the Offices.
The Office of first search conducts its search and provides the results to the other Office, which then provides the cumulative search results back to the Office of first search. Each Office then provides the combined search results in either a Notice of Allowance or a Pre-Interview Communication.
In the event that the Office of first search does not provide its search results to the other Office within ninety days of the mailing date of the decision granting participation in the pilot program, the other Office will issue its search results in either a Notice of Allowance or a Pre-Interview Communication noting that the JPO search results are not included. Accordingly, the Application will be removed from the pilot program and the procedures of the First Action Interview (FAI) Pilot Program will be followed.
(B) USPTO-KIPO Program
On the other hand, in the program between the USPTO and the KIPO, the USPTO search is conducted independently of the KIPO search, and then both search reports are provided to the Applicants for their consideration. If the USPTO has completed its search and Pre-Interview Communication prior to receiving the KIPO search report, the Examiner will notify the KIPO of his or her findings. After completion of the Pre-Interview Communication, the USPTO will wait up to ninety days to receive the KIPO search report. If the KIPO search report is received in time, the USPTO will issue the Pre-Interview Communication with a copy of the KIPO search report attached. If the KIPO search report is not received within ninety days, the Application will be removed from the CSP program and the FAI procedures will be followed.
Additionally, if the Examiner determines that the claims are allowable, the USPTO will notify the KIPO and wait up to ninety days to receive the KIPO search report. Upon receipt of the KIPO search report, the Examiner will consider the references cited therein before making a final determination of whether to issue a Notice of Allowability. If the KIPO search report is not received within ninety days, the Examiner will issue the Notice of Allowability and the Applicants will need to determine whether the KIPO search report must be disclosed to the USPTO.
The pilots programs’ post-search procedures are based on the FAI program. Under the FAI program, the Examiner provides a Pre-Interview Communication to the Applicants in advance of substantive examination of the claims. In response to the Pre-Interview Communication, Applicant have the longer of one month or thirty days to take one of the following actions:
(1) file a “Request to Not Have a First Action Interview” and the Examiner will issue a First-Action Interview Office Action in due course;
(2) submit a reply under 37 C.F.R. § 1.111, treating the Pre-Interview Communication as the first Office Action on the merits (subsequent Office Actions may be made final); or
(3) schedule the first action interview within the longer of two months or sixty days from submission of an Applicant Initiated Interview Request Form (PTOL-413A).
If Applicants opt to conduct a first action interview, proposed amendments or arguments must be filed as an attachment to the Applicant Initiated Interview Request Form. The proposed amendments or arguments will not be entered as a matter of right and must address every rejection, objection, and requirement set forth in the Pre-Interview communication. Multiple proposed amendments or sets of arguments are not permitted. And inventor participation is encouraged. If the first action interview does not result in allowance of the claims, the Examiner will address the remaining issues in a First-Action Interview Office Action. Alternatively, the Examiner and Applicants may agree to convert the proposed amendments or arguments into a reply under 37 C.F.R. § 1.111, waiving a First-Action Interview Office Action.
If Applicants fail to timely reply to the Pre-Interview Communication (or fail to timely conduct the first action interview), Applicants waive their right to a first action interview and the USPTO will issue a First-Action Interview Office Action (i.e., option (1) above is the default). The period for reply to the First-Action Interview Office Action is the longer of two months or sixty days and is extendable under 37 C.F.R. § 1.136(a) for only two additional months.
The new CSP programs offer a new option for accelerated examination. Unlike the PPH, the claims do not need to be allowed in one of the Offices; rather the claims must be unexamined in both Offices. Additionally, applications receive special status until after the Pre-Interview Communication is issued, without the typical fee associated with the Petition to Make Special. As such, the CSP programs appear to be an attractive route when filing applications in both the USPTO and the JPO or KIPO.
However, since each Office is only accepting 200 applications per year, it seems that either acceptance to the program will be procedurally restricted (i.e., Examiners will sparingly approve requests to join pilot) or the quota will be reached prior to the end of the year such that applications will no longer be accepted. Additionally, Applicants considering participation in the CSP programs should be aware that withdrawal from the programs is not permitted once the petition for participation has been granted (one day before it appears in PAIR). And, once the petition has been granted, preliminary amendments are limited to those that do not affect the claims (unless otherwise approved by the Examiner). Also, Applicants’ right to traverse a restriction requirement is waived via participation in the CSP programs.
Accordingly, prior to filing a petition for participation in one of the CSP programs, Applicants should weigh the benefits of accelerated prosecution against the procedural burdens of the CSP programs.