83 FR 30145 - Patent Cooperation Treaty Collaborative Search and Examination Pilot Project Between the IP5 Offices

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 83, Issue 124 (June 27, 2018)

The United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the State Intellectual Property Office of the People's Republic of China (SIPO), referred to collectively as the IP5 Offices, will launch a pilot project on Collaborative Search and Examination (CS&E) under the Patent Cooperation Treaty (PCT). This will be the third such pilot. The USPTO, the EPO, and the KIPO conducted two previous pilots in 2010 and in 2011-2012. The third pilot is needed to further develop and test the concept amongst all the IP5 Offices. In particular, this IP5 pilot project aims at assessing user interest for a CS&E product and the expected efficiency gains for the IP5 Offices.

[Federal Register Volume 83, Number 124 (Wednesday, June 27, 2018)]
[Notices]
[Pages 30145-30147]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2018-13800]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2018-0032]


Patent Cooperation Treaty Collaborative Search and Examination 
Pilot Project Between the IP5 Offices

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO), the 
European Patent Office (EPO), the Japan Patent Office (JPO), the Korean 
Intellectual Property Office (KIPO) and the State Intellectual Property 
Office of the People's Republic of China (SIPO), referred to 
collectively as the IP5 Offices, will launch a pilot project on 
Collaborative Search and Examination (CS&E) under the Patent 
Cooperation Treaty (PCT). This will be the third such pilot. The USPTO, 
the EPO, and the KIPO conducted two previous pilots in 2010 and in 
2011-2012. The third pilot is needed to further develop and test the 
concept amongst all the IP5 Offices. In particular, this IP5 pilot 
project aims at assessing user interest for a CS&E product and the 
expected efficiency gains for the IP5 Offices.

DATES: 
    Pilot Effective date: July 1, 2018.
    Duration: Requests to participate in the PCT CS&E pilot project may 
be filed with international applications filed through the receiving 
Office of one of the IP5 Offices or the International Bureau of the 
World Intellectual Property Organization (WIPO) until June 30, 2020. 
During each year, the USPTO, in its capacity as the main International 
Searching Authority, will accept a total of 50 international 
applications into the pilot.

FOR FURTHER INFORMATION CONTACT: Inquiries regarding the handling of 
any specific application participating in the pilot may be directed to 
Daniel Hunter, Director of International Work Sharing, Planning, and 
Implementation, Office of International Patent Cooperation, by 
telephone at (571) 272-8050 or by email to [email protected]. 
Inquiries concerning this notice may be directed to Michael Neas, 
Deputy Director, International Patent Legal Administration, by phone 
(571) 272-3289 or by email to [email protected].

SUPPLEMENTARY INFORMATION:

I. Concept

    The concept of CS&E under the PCT refers to the collaboration of 
examiners from different International Searching Authorities in 
different regions and with different working languages on one 
international application for the establishment of an international 
search report and written opinion under PCT Chapter I, which, although 
remaining the opinion of the chosen International Search Authority, is 
based on contributions from all participating IP5 Offices.
    Under the pilot project, the examiner of the IP5 Office from the 
chosen International Searching Authority under PCT Rule 35 for a given 
international application (``the main examiner'') works on the 
application by conducting the search and examination and by 
establishing a provisional international search report and written 
opinion. These provisional work products are transmitted to examiners 
from the other participating IP5 Offices in their capacity as an 
International Searching Authority (``the peer examiners''). Each peer 
examiner provides the main examiner with his contribution, in light of 
the provisional international search report and written opinion. The 
final international search report and written opinion are subsequently 
established by the main examiner after having taken into consideration 
the contributions of the peer examiners. Further details regarding the 
implementation of the

[[Page 30146]]

CS&E concept within the framework of this pilot project are provided 
below.

II. Framework

    Under the pilot project, with a view to assessing the users' 
interest for a CS&E product, international applications processed under 
the collaborative scheme will be selected by applicants (``applicant-
driven approach''), whereas, under the two previous pilot projects, the 
applications were selected by the participating IP5 Offices.
    Applicants wishing to participate in the pilot project must submit 
a request for participation in the pilot on a standard participation 
form and file it together with the international application at the 
receiving Office of one of the IP5 Offices or the International Bureau. 
The participation form is available in all official languages of the 
IP5 Offices on WIPO's website at http://www.wipo.int/pct/en/filing/cse.html.
    For international applications filed in English, requests for 
participation in the pilot may be filed beginning July 1, 2018. Each 
applicant will be able to select only a limited number of international 
applications for inclusion in the program.
    Initially, only international applications filed in English will be 
accepted into the pilot. Eventually, international authorities that 
work in languages other than English will accept international 
applications filed in those languages into the pilot. Each main 
International Searching Authority that will accept international 
applications filed in a language other than English will inform the 
applicants accordingly by a communication published on its website. 
Such communication will specify the additional languages that will be 
accepted by a main International Searching Authority for the purposes 
of this pilot and the date as of which requests for participation in 
the pilot may be filed in such languages. The USPTO in its capacity as 
an International Searching Authority only accepts applications in 
English.
    The receiving Office will transmit the participation form to the 
International Bureau and the main International Searching Authority as 
part of the record copy and search copy, respectively. Upon receipt of 
the search copy, the main International Searching Authority will 
determine if the request for participation in the pilot may be accepted 
based on whether the applicable requirements detailed below in part III 
are met. The International Searching Authority will notify the 
applicant and the International Bureau of the acceptance or refusal of 
the request for participation in the pilot using Form PCT/ISA/224 
(Communication in Cases for Which No Other Form Is Applicable).
    The main International Searching Authority will perform the search 
and examination as it would for any other international application not 
processed under this pilot. It will establish a provisional 
international search report (Form PCT/ISA/210) (or, where appropriate, 
declaration of non-establishment of international search report (Form 
PCT/ISA/203)) and written opinion (Form PCT/ISA/237), and, where 
applicable, a record of the search strategy. The form and content of 
the record of the search strategy will generally be according to the 
current practice of each International Searching Authority.
    The main International Searching Authority will transmit the above 
mentioned provisional work products to the peer International Searching 
Authorities, where a peer examiner will prepare a contribution to the 
final work product, taking into consideration the provisional work 
products prepared by the main International Searching Authority and 
performing additional searching to the extent deemed necessary.
    With respect to the handling of cases lacking unity of invention by 
the peer International Searching Authorities, a principle of the first 
invention will be followed. This means that each main International 
Searching Authority proceeds with the non-unity procedure according to 
its own standard practice, while the provisional work products 
submitted to the peer International Searching Authorities are based 
only on the invention first mentioned in the claims as determined by 
the main International Searching Authority. Peer examiners will focus 
their searches on what they determine to be the first invention, 
regardless of whether the provisional work products are directed to one 
or more inventions.
    Each peer International Searching Authority will transmit its 
contribution to the main International Searching Authority using a 
standard peer contribution form. Depending on its practice, each peer 
International Searching Authority will either record its contribution 
directly on the peer contribution form or use the peer contribution 
form as a cover sheet for the standard forms PCT/ISA/210 and PCT/ISA/
237. Peer contribution forms and peer contributions attached to such 
forms, if any, will be made available as separate documents in WIPO's 
PATENTSCOPE.
    The main International Searching Authority will consider the 
contributions received from the peer International Searching 
Authorities and prepare the final international search report (Form 
PCT/ISA/210) (or, where appropriate, declaration of non-establishment 
of international search report (Form PCT/ISA/203)) and written opinion 
(Form PCT/ISA/237) in light of these contributions. The main 
International Searching Authority will strive to establish these final 
work products within the time limit under PCT Rule 42.1; however, 
compliance with this time limit may not be guaranteed due to the 
collaborative nature of the pilot project, which inherently results in 
additional administrative burdens. The final work products will be 
transmitted to the applicant and the International Bureau.
    Final CS&E work products will be identified, either by a direct 
indication in box V of Form PCT/ISA/237 or at the top of a supplemental 
sheet referenced in said box, as the result of the collaboration under 
the pilot, which does not necessarily reflect the opinions of all IP5 
Offices. Only the final CS&E work product may serve as a basis for 
requesting participation in a Patent Prosecution Highway (PPH) pilot 
program.
    All exchanges of documents and information among the IP5 Offices 
will be carried out via an ePCT-based platform allowing a secure and 
confidential data transmission. This ePCT-based platform is provided 
and maintained by the International Bureau.
    In this pilot project, the international search fee charged by each 
IP5 Office remains unchanged. Therefore, applicants participating in 
this pilot will pay only the standard fee for a PCT Chapter I search at 
the chosen International Searching Authority. However, if following 
this pilot the CS&E product is implemented as a regular product under 
the PCT, applicants will have to pay a specific fee for such product 
(the CS&E fee). The maximum prospective amount of the CS&E fee is the 
aggregated amount of the search fees of the participating International 
Searching Authorities plus an administrative fee to cover the 
collaboration costs.
    Towards the end of the pilot project, participating applicants will 
be asked to complete a questionnaire about their interest for a regular 
CS&E product under the PCT. Responses to the questionnaire will be 
taken into account by the IP5 Offices in the assessment of the pilot 
project.

[[Page 30147]]

III. Requirements and Limitations for Participation

    Applicants who would like to participate in the pilot project must 
be aware of both the following requirements to be met by applicants and 
the following limitations set by the IP5 Offices.

A. Requirements To Be Met by Applicants

    The following requirements must be met by applicants wishing to 
participate in the pilot project:
    (a) The request for participation in the pilot must be submitted on 
the standard participation form and filed together with the 
international application.
    (b) The participation form and the international application must 
be filed at the receiving Office of one of the IP5 Offices or at the 
International Bureau as receiving Office, and the applicant must select 
one of the IP5 Offices as the main International Searching Authority 
under PCT Rule 35. For example, U.S. applicants filing with the USPTO 
or the International Bureau as receiving Office may select the USPTO, 
the EPO, the KIPO, or the JPO as International Searching Authority, 
subject to certain limitations as described in the PCT Applicant's 
Guide, Annex C/US.
    (c) Where the participation form and the international application 
are filed with the USPTO, they must be filed in electronic form via the 
USPTO's EFS-Web system. The participation form must be loaded into EFS-
Web as a separate document using document description ``Request to 
Participate in PCT CS&E Pilot.'' This is true even where the 
participation form is prepared using WIPO's ePCT system since EFS-Web 
only extracts the PCT Request form and Fee Calculation sheet from ePCT 
or PCT Safe zip files.
    (d) The participation form and the international application must 
be filed in English when they are filed with the USPTO. As noted above, 
the other IP5 Offices will initially only accept applications filed in 
English and will announce when they are prepared to accept applications 
in languages other than English.

B. Limitations Set by the IP5 Offices

    The following limitations related to organizational aspects of the 
pilot must be complied with for the main International Searching 
Authority to accept a request for participation in the pilot:
    (a) The applicant must not have had ten international applications 
accepted in the pilot by the same main International Searching 
Authority.
    (b) The main International Searching Authority must not have 
accepted 100 international applications into the pilot. The USPTO, in 
its capacity as the main International Searching Authority, will accept 
50 applications during the first year of the pilot, that is from July 
1, 2018, to June 30, 2019, and 50 applications during the second year 
of the pilot, that is from July 1, 2019, to June 30, 2020.
    (c) The main International Searching Authority must not determine 
that there is a defect in the application (e.g., the application does 
not contain a sequence listing portion of the description and/or a copy 
of a sequence listing in computer readable form as provided for in the 
Administrative Instructions under the PCT) impeding the processing of 
the application according to the timeline for the collaborative 
process.

IV. Duration

    The pilot project is divided into two phases, a preparatory phase 
and an operational phase. The preparatory phase started on June 2, 
2016, and was dedicated to the administrative and practical 
preparations required for a smooth functioning of the pilot. The 
operational phase will start on July 1, 2018, and will be dedicated to 
the processing of applications under the collaborative scheme, the 
monitoring of applications for evaluation purposes, and the assessment 
of the outcome of the pilot. The operational phase will last for a 
period of three years ending on July 1, 2021, and will include an 
evaluation of the impact of the pilot on examination during the 
subsequent national/regional stages. Requests for participation in the 
pilot will be accepted only during the first two years of the 
operational phase, i.e., from July 1, 2018, to June 30, 2020.

    Dated: June 21, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2018-13800 Filed 6-26-18; 8:45 am]
 BILLING CODE 3510-16-P