Coordinating Patent Filings in the US, Japan, and Korea

The US Patent and Trademark Office (USPTO) has extended the Expanded Collaborative Search Pilot (CSP) program, originally running from November 2017 through October 2020, for an additional two years.

As of March 29, the USPTO, the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will again accept a new combined petition for the CSP program.

The program gives applicants the opportunity for an accelerated patent examination and search results to determine whether there is any prior art that would make the proposed invention unpatentable.

As the USPTO explains,

With the Expanded CSP, applicants may request that multiple partnering intellectual property (IP) offices exchange search results for their counterpart applications prior to formulating and issuing their office actions. Each designated partner IP office independently conducts a prior art search for its corresponding counterpart application. The search results are then exchanged between the designated partner IP office(s), including the USPTO, before any IP office issues an office action. With this exchange of search results, the examiners in all designated partner IP offices will have a more comprehensive set of prior art references to consider when making initial patentability determinations. The Expanded CSP allows the USPTO to study the impact on examination processes of exchanges of search results between the USPTO and multiple partner IP offices prior to formulating and issuing office actions.

This is seen as being more efficient than the previous system:

Currently, applicants in the USPTO having U.S. applications with claims of foreign priority may have search results and prior art cited to them by the foreign IP office during pendency of their U.S. applications. Often, applicants submit the prior art after examination on the merits is already underway in their U.S. application. Upon evaluation of the search results and cited prior art, the U.S. examiner may determine that the prior art cited by the foreign office is relevant to patentability and merits being used in further examination before making a final determination on patentability of the pending claims. This delay caused by further examination results in additional costs to applicants and the USPTO that could have been avoided if the U.S. examiner was in possession of the foreign office's search results before commencing examination of the U.S. application. Furthermore, in light of the USPTO's various expedited examination programs, the possibility exists that a U.S. application may reach final disposition before the applicant is in receipt of a foreign office's search results. The exchange of search results between IP offices before an initial determination on patentability should increase efficiency and promote patent examination quality.

This revived program is currently active only until October 31, and only 400 petitions will be granted per year. The patent offices involved may decide to extend the program further, or to stop participating at any time.

Applicants need to file their petition only with the USPTO and either the JPO or the KIPO.

The CSP program isn’t appropriate for all patent applications in the participating countries, but where it is suitable it may lead to accelerated patent examination, more consistent examinations of patent claims, and lower fees.