Collaborative Search Pilot Program for ApplicantsSasha T. Varghese
November 3, 2015
On August 1, 2015, the USPTO established the Collaborative Search Pilot Program (CSP), which provides Applicants having corresponding applications at the USPTO and either the JPO or KIPO with accelerated examination and preliminary search and evaluation results from both the USPTO and the JPO or KIPO prior to a first Office Action on the merits. The CSP is based on the First Action Interview (FAI) pilot program, which bifurcates the search and examination portions of prosecution.
Consideration under the program requires a Petition to Make Special under the CSP (see CSP-JP or CSP-KR). There are no additional fees for filing a CSP Petition.
In order to qualify for the CSP:
- There must be a maximum of three independent claims, and twenty total claims;
- There must be unity of invention;
- The claims must correspond between the USPTO application and the JPO or KIPO application;
- The earliest priority date must be after March 16, 2013;
- The application must be unexamined in both the USPTO and the JPO or KIPO; and
- The CSP Petition must be granted by both the USPTO and the JPO or KIPO.
Under the CSP-JP, the USPTO and the JPO exchange search and evaluation results and each Office furnishes the results to the Applicant before full examination of the claims. Under the CSP-KR, the USPTO and the KIPO independently produce search and evaluation results and each Office furnishes the results to the Applicant before full examination of the claims. Under either the CSP-JP or CSP-KR, the Applicant also has the option to conduct an interview before full examination of the claims.
After a CSP Petition is granted, the Applicant:
- Waives the right to elect with traverse (i.e., if a restriction requirement is instituted, the Applicant must elect over the telephone without traverse);
- Cannot substantively change the claims in a preliminary amendment (unless the Examiner otherwise approves);
- Cannot withdraw from the CSP; and
- Cannot file a request for a refund of the search fee or excess claims fees.
The CSP will run for two years (until July 31, 2017) with the option to extend, and there is a limit of 200 applications per year per office of first search.
Additional information may be found at http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.html.