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)
Patent and Trademark Office
Federal Register Volume 81, Issue 128 (July 5, 2016)
| Page Range | 43591-43592 | |
| FR Document | 2016-15850 |
[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] ----------------------------------------------------------------------- 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. ----------------------------------------------------------------------- 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have determined that publication of the applications is unnecessary for participation in the pilot program and that unpublished applications can participate in the pilot program as long as applicants grant access to the unpublished application and provide a translated copy of the currently pending claims from the corresponding counterpart application(s).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 Instead, if unpublished, applicant must provide an authorization of access to the unpublished application and submit a translation of the currently pending claims from the corresponding counterpart application(s).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
![Federal Register / Vol. 81, No. 128 / Tuesday, July 5, 2016 / Notices 43591
Street, Suite 201, Dover, DE 19901; Street, Baltimore, MD 21202; telephone: FOR FURTHER INFORMATION CONTACT:
telephone: (302) 674–2331 or on their (410) 234–0550. Jennifer Skidmore or Amy Hapeman,
Web site at www.mafmc.org. Council address: Mid-Atlantic Fishery (301) 427–8401.
FOR FURTHER INFORMATION CONTACT: Management Council, 800 N. State SUPPLEMENTARY INFORMATION: On May
Christopher M. Moore, Ph.D., Executive Street, Suite 201, Dover, DE 19901; 13, 2016, notice was published in the
Director, Mid-Atlantic Fishery telephone: (302) 674–2331 or on their Federal Register (81 FR 29846) that a
Management Council, telephone: (302) Web site at www.mafmc.org. request for a permit to conduct
526–5255. FOR FURTHER INFORMATION CONTACT: commercial or educational photography
SUPPLEMENTARY INFORMATION: The Christopher M. Moore, Ph.D., Executive on bottlenose dolphins in the Florida
Summer Flounder, Scup, and Black Sea Director, Mid-Atlantic Fishery Bay had been submitted by the above-
Bass Monitoring Committee will meet Management Council, telephone: (302) named applicant. The requested permit
from 1 p.m. to 5 p.m. to review and 526–5255. has been issued under the authority of
discuss previously implemented 2017 SUPPLEMENTARY INFORMATION: The the Marine Mammal Protection Act of
commercial and recreational Annual purpose of the meeting to discuss and 1972, as amended (16 U.S.C. 1361 et
Catch Limits (ACLs) and Annual Catch approve the Council’s Ecosystem seq.) and the regulations governing the
Targets (ACTs) for these three species. Approach to Fisheries Management taking and importing of marine
The Monitoring Committee may Guidance Document which will be mammals (50 CFR part 216).
consider recommending changes to the presented to the Council at its August The permit authorizes filming and
implemented 2017 ACLs and ACTs and 2016 meeting. photography of the Florida Bay stock of
other management measures as bottlenose dolphins for purposes of a
Special Accommodations documentary film. Dolphins may be
necessary. Meeting materials will be
posted to http://www.mafmc.org/ prior The meeting is physically accessible harassed during aerial and vessel-based
to the meeting. to people with disabilities. Requests for filming activities. Filming may take
sign language interpretation or other place for approximately 30 days over
Special Accommodations auxiliary aids should be directed to M. two field seasons. The permit is valid
The meeting is physically accessible Jan Saunders at the Mid-Atlantic through July 31, 2017.
to people with disabilities. Requests for Council Office, (302) 526–5251, at least In compliance with the National
sign language interpretation or other 5 days prior to the meeting date. Environmental Policy Act of 1969 (42
auxiliary aids should be directed to M. Dated: June 29, 2016.
U.S.C. 4321 et seq.), a final
Jan Saunders at the Mid-Atlantic determination has been made that the
Tracey L. Thompson,
Council Office, (302) 526–5251, at least activity proposed is categorically
Acting Deputy Director, Office of Sustainable excluded from the requirement to
5 days prior to the meeting date. Fisheries, National Marine Fisheries Service.
Dated: June 29, 2016.
prepare an environmental assessment or
[FR Doc. 2016–15808 Filed 7–1–16; 8:45 am]
environmental impact statement.
Tracey L. Thompson, BILLING CODE 3510–22–P
Acting Deputy Director, Office of Sustainable Dated: June 28, 2016.
Fisheries, National Marine Fisheries Service. Julia Harrison,
[FR Doc. 2016–15809 Filed 7–1–16; 8:45 am] DEPARTMENT OF COMMERCE Chief, Permits and Conservation Division,
BILLING CODE 3510–22–P Office of Protected Resources, National
National Oceanic and Atmospheric Marine Fisheries Service.
Administration [FR Doc. 2016–15775 Filed 7–1–16; 8:45 am]
DEPARTMENT OF COMMERCE BILLING CODE 3510–22–P
RIN 0648–XE615
National Oceanic and Atmospheric
Administration Marine Mammals; File No. 20324 DEPARTMENT OF COMMERCE
AGENCY: National Marine Fisheries
RIN 0648–XE712 Patent and Trademark Office
Service (NMFS), National Oceanic and
Mid-Atlantic Fishery Management Atmospheric Administration (NOAA), [Docket No. PTO–P–2016–0013]
Council (MAFMC); Public Meeting Commerce.
ACTION: Notice; issuance of permit.
Elimination of Publication Requirement
AGENCY: National Marine Fisheries in the Collaborative Search Pilot
Service (NMFS), National Oceanic and SUMMARY: Notice is hereby given that a Program Between the Japan Patent
Atmospheric Administration (NOAA), permit has been issued to Living Planet Office and the United States Patent
Commerce. Productions/Silverback Films, 1 St and Trademark Office
ACTION: Notice; public meeting. Augustines Yard, Gaunts Lane, Bristol,
AGENCY: United States Patent and
BS1 5DE, United Kingdom [Responsible
SUMMARY: The Ecosystem and Ocean Trademark Office, Commerce.
Party: Emily Lascelles], to conduct
Planning Committee (EOP) of the Mid- commercial or educational photography ACTION: Notice.
Atlantic Fishery Management Council on bottlenose dolphins (Tursiops
(Council) will hold a meeting. SUMMARY: The United States Patent and
truncatus). Trademark Office (USPTO)
DATES: The meeting will be held on
ADDRESSES: The permit and related implemented a Collaborative Search
sradovich on DSK3GDR082PROD with NOTICES
Thursday and Friday, July 21–22, 2016, documents are available for review Pilot Program with the Japan Patent
beginning at 1:30 p.m. on July 21 and upon written request or by appointment Office (JPO) on August 1, 2015, to study
conclude by 2 p.m. on July 22. For in the Permits and Conservation whether the exchange of search results
agenda details, see SUPPLEMENTARY Division, Office of Protected Resources, between offices for corresponding
INFORMATION.
NMFS, 1315 East-West Highway, Room counterpart applications improves
ADDRESSES: The meeting will at the 13705, Silver Spring, MD 20910; phone patent quality and facilitates the
Royal Sonesta Harbor Court, 550 Light (301) 427–8401; fax (301) 713–0376. examination of patent applications in
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![43592 Federal Register / Vol. 81, No. 128 / Tuesday, July 5, 2016 / Notices
both offices. Based upon feedback from SUPPLEMENTARY INFORMATION: The forth in the JPO–CSP Notice.
the public, the USPTO is modifying the USPTO published a notice to implement Requirements (1)–(3) set forth in Part III
Collaborative Search Pilot Program a joint work sharing initiative, a of the original JPO–CSP Notice of
between JPO and USPTO (JPO–CSP) by Collaborative Search Pilot Program, August 1, 2015, are modified by this
removing the requirement that the between JPO and USPTO on July 10, notice to reflect the modifications
applications must be published in order 2015. See United States Patent and discussed above. They are now as
to participate in the pilot program. The Trademark Office and Japan Patent follows:
JPO and USPTO have determined that Office Collaborative Search Pilot
publication of the applications is Program, 80 FR 39752 (July 10, 2015), (1) The application must be a non-
unnecessary for participation in the 1417 Off. Gaz. Pat. Office 68 (August 4, reissue, non-provisional utility
pilot program and that unpublished 2015) (JPO–CSP Notice). The JPO–CSP application filed under 35 U.S.C. 111(a),
applications can participate in the pilot Notice indicated that an applicant can or an international application that has
program as long as applicants grant request, via petition to make special, to entered the national stage in compliance
access to the unpublished application have an application advanced out of with 35 U.S.C. 371(c) with an effective
and provide a translated copy of the turn (accorded special status) for filing date no earlier than March 16,
currently pending claims from the examination, if the application was 2013. The U.S. application and the
corresponding counterpart published and satisfied other corresponding JPO counterpart
application(s). Accordingly, publication requirements specified in the JPO–CSP application must have a common
of an application will no longer be a Notice. The pilot program is designed to earliest priority date that is no earlier
prerequisite for participation in the ensure the applications are than March 16, 2013.
JPO–CSP as of the effective date of this contemporaneously examined so that
(2) A completed petition form PTO/
notice. Instead, if unpublished, examiners from both offices have a more
comprehensive set of references along SB/437JP–U must be filed in the
applicant must provide an authorization application via EFS-web. Form PTO/SB/
of access to the unpublished application with corresponding claim sets before
them when making initial patentability 437JP–U is available at http://
and submit a translation of the currently
determinations. The USPTO has www.uspto.gov/patent/patents-forms. If
pending claims from the corresponding
received feedback and suggestions from the application is unpublished the
counterpart application(s). These
modifications should permit more stakeholders regarding the pilot petition must include a translated copy
applications to qualify for the program, program’s design. of the currently pending claims from the
supporting the program’s study of the Under the JPO–CSP as originally corresponding counterpart
efficacy of exchanging search results implemented, each office conducted a application(s). A machine translation is
between corresponding counterpart prior art search for its corresponding acceptable.
applications to improve patent quality counterpart application and then (3) The petition submission must
and facilitate examination. exchanged the search results with the
include an express written consent
other office before either office issued a
DATES: Effective Date: August 1, 2016. under 35 U.S.C. 122(c) for the USPTO
communication to the applicant
regarding patentability. As a result of to receive prior art references and
Duration: Under this pilot program,
this exchange of search results, the comments from the JPO that will be
the USPTO and JPO will continue to
examiners in both offices had a more considered during the examination of
accept petitions to participate until
comprehensive set of references before the U.S. application participating in this
August 1, 2017, two years from the
original effective date of the program them when making their initial JPO Work Sharing Pilot Program. The
(August 1, 2015). During each year, the patentability determinations. As only petition also must provide written
pilot program will be limited to 400 published applications were permitted, authorization for the USPTO to provide
granted petitions, 200 granted petitions examiners also had access to the JPO access to the participating U.S.
where USPTO performs the first search currently pending claims of both application’s bibliographic data and
and JPO performs the second search, applications. search reports in accordance with 35
and 200 granted petitions where JPO The USPTO and JPO have determined U.S.C. 122(a) and 37 CFR 1.14(c). Form
performs the first search and USPTO that the publication requirement in the PTO/SB/437JP–U includes language
performs the second search. The offices JPO–CSP Notice is unnecessary as long compliant with the consent
may extend the pilot program (with or as the petition authorizes access to the requirement(s) for this pilot program.
without modification) for an additional unpublished application and includes a
translation of the currently pending All other requirements and provisions
amount of time, if necessary. The offices set forth in the JPO–CSP Notice remain
reserve the right to terminate the pilot claims from the corresponding
counterpart application(s). Accordingly, unchanged. Please see the JPO–CSP
program at any time. Notice for more information on the
the USPTO is modifying the JPO–CSP to
FOR FURTHER INFORMATION CONTACT: remove the publication requirement and program.
Daniel Hunter, Director of International instead require the applicant to Dated: June 28, 2016.
Work Sharing, Planning and authorize access to the application and Michelle K. Lee,
Implementation, Office of International at least a machine translation of the
Patent Cooperation by telephone at currently pending claims from the Under Secretary of Commerce for Intellectual
(571) 272–8050 regarding the handling Property and Director of the United States
corresponding counterpart
Patent and Trademark Office.
of any specific application participating application(s).
sradovich on DSK3GDR082PROD with NOTICES
in the pilot. Any questions concerning To participate in the pilot program, [FR Doc. 2016–15850 Filed 7–1–16; 8:45 am]
this notice may be directed to Joseph applicants should now use Form PTO/ BILLING CODE 3510–16–P
Weiss, Senior Legal Advisor, Office of SB/437JP–U, which is available at
Patent Legal Administration by http://www.uspto.gov/patent/patents-
telephone at (571) 272–7759. Any forms, when filing a petition to make
inquiries regarding this pilot program special under this pilot program
can be emailed to wspilots@uspto.gov. satisfying all other requirements set
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Document Created: 2016-07-01 23:49:35
Document Modified: 2016-07-01 23:49:35
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Notices | |
| Action | Notice. | |
| 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] | |
| FR Citation | 81 FR 43591 |
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