81 FR 43591 - Elimination of Publication Requirement in the Collaborative Search Pilot Program Between the Japan Patent Office and the United States Patent and Trademark Office

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 81, Issue 128 (July 5, 2016)

The United States Patent and Trademark Office (USPTO) implemented a Collaborative Search Pilot Program with the Japan Patent Office (JPO) on August 1, 2015, to study whether the exchange of search results between offices for corresponding counterpart applications improves patent quality and facilitates the examination of patent applications in both offices. Based upon feedback from the public, the USPTO is modifying the Collaborative Search Pilot Program between JPO and USPTO (JPO-CSP) by removing the requirement that the applications must be published in order to participate in the pilot program. The JPO and USPTO have determined that publication of the applications is unnecessary for participation in the pilot program and that unpublished applications can participate in the pilot program as long as applicants grant access to the unpublished application and provide a translated copy of the currently pending claims from the corresponding counterpart application(s). Accordingly, publication of an application will no longer be a prerequisite for participation in the JPO-CSP as of the effective date of this notice. Instead, if unpublished, applicant must provide an authorization of access to the unpublished application and submit a translation of the currently pending claims from the corresponding counterpart application(s). These modifications should permit more applications to qualify for the program, supporting the program's study of the efficacy of exchanging search results between corresponding counterpart applications to improve patent quality and facilitate examination.

[Federal Register Volume 81, Number 128 (Tuesday, July 5, 2016)]
[Notices]
[Pages 43591-43592]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2016-15850]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No. PTO-P-2016-0013]


Elimination of Publication Requirement in the Collaborative 
Search Pilot Program Between the Japan Patent Office and the United 
States Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) 
implemented a Collaborative Search Pilot Program with the Japan Patent 
Office (JPO) on August 1, 2015, to study whether the exchange of search 
results between offices for corresponding counterpart applications 
improves patent quality and facilitates the examination of patent 
applications in

[[Page 43592]]

both offices. Based upon feedback from the public, the USPTO is 
modifying the Collaborative Search Pilot Program between JPO and USPTO 
(JPO-CSP) by removing the requirement that the applications must be 
published in order to participate in the pilot program. The JPO and 
USPTO have determined that publication of the applications is 
unnecessary for participation in the pilot program and that unpublished 
applications can participate in the pilot program as long as applicants 
grant access to the unpublished application and provide a translated 
copy of the currently pending claims from the corresponding counterpart 
application(s). Accordingly, publication of an application will no 
longer be a prerequisite for participation in the JPO-CSP as of the 
effective date of this notice. Instead, if unpublished, applicant must 
provide an authorization of access to the unpublished application and 
submit a translation of the currently pending claims from the 
corresponding counterpart application(s). These modifications should 
permit more applications to qualify for the program, supporting the 
program's study of the efficacy of exchanging search results between 
corresponding counterpart applications to improve patent quality and 
facilitate examination.

DATES: Effective Date: August 1, 2016.
    Duration: Under this pilot program, the USPTO and JPO will continue 
to accept petitions to participate until August 1, 2017, two years from 
the original effective date of the program (August 1, 2015). During 
each year, the pilot program will be limited to 400 granted petitions, 
200 granted petitions where USPTO performs the first search and JPO 
performs the second search, and 200 granted petitions where JPO 
performs the first search and USPTO performs the second search. The 
offices may extend the pilot program (with or without modification) for 
an additional amount of time, if necessary. The offices reserve the 
right to terminate the pilot program at any time.

FOR FURTHER INFORMATION CONTACT: Daniel Hunter, Director of 
International Work Sharing, Planning and Implementation, Office of 
International Patent Cooperation by telephone at (571) 272-8050 
regarding the handling of any specific application participating in the 
pilot. Any questions concerning this notice may be directed to Joseph 
Weiss, Senior Legal Advisor, Office of Patent Legal Administration by 
telephone at (571) 272-7759. Any inquiries regarding this pilot program 
can be emailed to [email protected].

SUPPLEMENTARY INFORMATION: The USPTO published a notice to implement a 
joint work sharing initiative, a Collaborative Search Pilot Program, 
between JPO and USPTO on July 10, 2015. See United States Patent and 
Trademark Office and Japan Patent Office Collaborative Search Pilot 
Program, 80 FR 39752 (July 10, 2015), 1417 Off. Gaz. Pat. Office 68 
(August 4, 2015) (JPO-CSP Notice). The JPO-CSP Notice indicated that an 
applicant can request, via petition to make special, to have an 
application advanced out of turn (accorded special status) for 
examination, if the application was published and satisfied other 
requirements specified in the JPO-CSP Notice. The pilot program is 
designed to ensure the applications are contemporaneously examined so 
that examiners from both offices have a more comprehensive set of 
references along with corresponding claim sets before them when making 
initial patentability determinations. The USPTO has received feedback 
and suggestions from stakeholders regarding the pilot program's design.
    Under the JPO-CSP as originally implemented, each office conducted 
a prior art search for its corresponding counterpart application and 
then exchanged the search results with the other office before either 
office issued a communication to the applicant regarding patentability. 
As a result of this exchange of search results, the examiners in both 
offices had a more comprehensive set of references before them when 
making their initial patentability determinations. As only published 
applications were permitted, examiners also had access to the currently 
pending claims of both applications.
    The USPTO and JPO have determined that the publication requirement 
in the JPO-CSP Notice is unnecessary as long as the petition authorizes 
access to the unpublished application and includes a translation of the 
currently pending claims from the corresponding counterpart 
application(s). Accordingly, the USPTO is modifying the JPO-CSP to 
remove the publication requirement and instead require the applicant to 
authorize access to the application and at least a machine translation 
of the currently pending claims from the corresponding counterpart 
application(s).
    To participate in the pilot program, applicants should now use Form 
PTO/SB/437JP-U, which is available at http://www.uspto.gov/patent/patents-forms, when filing a petition to make special under this pilot 
program satisfying all other requirements set forth in the JPO-CSP 
Notice. Requirements (1)-(3) set forth in Part III of the original JPO-
CSP Notice of August 1, 2015, are modified by this notice to reflect 
the modifications discussed above. They are now as follows:
    (1) The application must be a non-reissue, non-provisional utility 
application filed under 35 U.S.C. 111(a), or an international 
application that has entered the national stage in compliance with 35 
U.S.C. 371(c) with an effective filing date no earlier than March 16, 
2013. The U.S. application and the corresponding JPO counterpart 
application must have a common earliest priority date that is no 
earlier than March 16, 2013.
    (2) A completed petition form PTO/SB/437JP-U must be filed in the 
application via EFS-web. Form PTO/SB/437JP-U is available at http://www.uspto.gov/patent/patents-forms. If the application is unpublished 
the petition must include a translated copy of the currently pending 
claims from the corresponding counterpart application(s). A machine 
translation is acceptable.
    (3) The petition submission must include an express written consent 
under 35 U.S.C. 122(c) for the USPTO to receive prior art references 
and comments from the JPO that will be considered during the 
examination of the U.S. application participating in this JPO Work 
Sharing Pilot Program. The petition also must provide written 
authorization for the USPTO to provide JPO access to the participating 
U.S. application's bibliographic data and search reports in accordance 
with 35 U.S.C. 122(a) and 37 CFR 1.14(c). Form PTO/SB/437JP-U includes 
language compliant with the consent requirement(s) for this pilot 
program.
    All other requirements and provisions set forth in the JPO-CSP 
Notice remain unchanged. Please see the JPO-CSP Notice for more 
information on the program.

    Dated: June 28, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-15850 Filed 7-1-16; 8:45 am]
 BILLING CODE 3510-16-P