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)
Patent and Trademark Office
Federal Register Volume 83, Issue 124 (June 27, 2018)
| Page Range | 30145-30147 | |
| FR Document | 2018-13800 |
[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] ----------------------------------------------------------------------- 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. ----------------------------------------------------------------------- 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
![Federal Register / Vol. 83, No. 124 / Wednesday, June 27, 2018 / Notices 30145
(c) Acoustic Monitoring Report • The request for renewal must Pilot Effective date: July 1, 2018.
Seattle DOT shall submit an Acoustic include the following: Duration: Requests to participate in
Monitoring Report within 90 days after (1) An explanation that the activities the PCT CS&E pilot project may be filed
completion of the in-water construction to be conducted beyond the initial dates with international applications filed
work, expiration of the IHA (if issued), either are identical to the previously through the receiving Office of one of
or 60 days prior to the requested date of analyzed activities or include changes the IP5 Offices or the International
issuance of any subsequent IHA, so minor (e.g., reduction in pile size) Bureau of the World Intellectual
whichever sooner. The report shall that the changes do not affect the Property Organization (WIPO) until June
provide details on the monitored piles, previous analyses, take estimates, or 30, 2020. During each year, the USPTO,
method of installation, monitoring mitigation and monitoring in its capacity as the main International
equipment, and sound levels requirements. Searching Authority, will accept a total
documented during both the sound (2) A preliminary monitoring report of 50 international applications into the
source measurements and the showing the results of the required pilot.
background monitoring. NMFS shall monitoring to date and an explanation FOR FURTHER INFORMATION CONTACT:
have an opportunity to provide showing that the monitoring results do Inquiries regarding the handling of any
comments on the report or changes in not indicate impacts of a scale or nature specific application participating in the
monitoring for the second season, and if not previously analyzed or authorized. pilot may be directed to Daniel Hunter,
NMFS has comments, Seattle DOT shall • Upon review of the request for Director of International Work Sharing,
address the comments and submit a renewal, the status of the affected Planning, and Implementation, Office of
final report to NMFS within 30 days. If species or stocks, and any other International Patent Cooperation, by
no comments are received from NMFS pertinent information, NMFS telephone at (571) 272–8050 or by email
within 30 days, the draft report shall be determines that there are no more than to daniel.hunter@uspto.gov. Inquiries
considered final. Any comments minor changes in the activities, the concerning this notice may be directed
received during that time shall be mitigation and monitoring measures to Michael Neas, Deputy Director,
addressed in full prior to finalization of remain the same and appropriate, and International Patent Legal
the report. the original findings remain valid. Administration, by phone (571) 272–
8. This Authorization may be Elaine T. Saiz, 3289 or by email to michael.neas@
modified, suspended or withdrawn if uspto.gov.
Acting Deputy Director, Office of Protected
the holder fails to abide by the Resources, National Marine Fisheries Service. SUPPLEMENTARY INFORMATION:
conditions prescribed herein or if NMFS [FR Doc. 2018–13803 Filed 6–26–18; 8:45 am]
determines the authorized taking is I. Concept
BILLING CODE 3510–22–P
having more than a negligible impact on The concept of CS&E under the PCT
the species or stock of affected marine refers to the collaboration of examiners
mammals. DEPARTMENT OF COMMERCE from different International Searching
9. A copy of this Authorization must Authorities in different regions and with
be in the possession of each contractor Patent and Trademark Office different working languages on one
who performs the construction work at international application for the
[Docket No.: PTO–P–2018–0032]
the Pier 62 Project. establishment of an international search
Patent Cooperation Treaty report and written opinion under PCT
Request for Public Comments Chapter I, which, although remaining
Collaborative Search and Examination
We request comment on our analyses, Pilot Project Between the IP5 Offices the opinion of the chosen International
the proposed authorization, and any Search Authority, is based on
other aspect of this Notice of Proposed AGENCY: United States Patent and contributions from all participating IP5
IHA for the proposed pile driving Trademark Office, Commerce. Offices.
activities by Seattle DOT. We also ACTION: Notice. Under the pilot project, the examiner
request comment on the potential for of the IP5 Office from the chosen
renewal of this proposed IHA as SUMMARY: The United States Patent and International Searching Authority under
described in the paragraph below. Trademark Office (USPTO), the PCT Rule 35 for a given international
Please include with your comments any European Patent Office (EPO), the Japan application (‘‘the main examiner’’)
supporting data or literature citations to Patent Office (JPO), the Korean works on the application by conducting
help inform our final decision on the Intellectual Property Office (KIPO) and the search and examination and by
request for MMPA authorization. the State Intellectual Property Office of establishing a provisional international
On a case-by-case basis, NMFS may the People’s Republic of China (SIPO), search report and written opinion.
issue a subsequent one-year IHA referred to collectively as the IP5 These provisional work products are
without additional notice when (1) Offices, will launch a pilot project on transmitted to examiners from the other
another year of identical or nearly Collaborative Search and Examination participating IP5 Offices in their
identical activities as described in the (CS&E) under the Patent Cooperation capacity as an International Searching
Specified Activities section is planned Treaty (PCT). This will be the third such Authority (‘‘the peer examiners’’). Each
or (2) the activities would not be pilot. The USPTO, the EPO, and the peer examiner provides the main
completed by the time the IHA expires KIPO conducted two previous pilots in examiner with his contribution, in light
and a subsequent IHA would allow for 2010 and in 2011–2012. The third pilot of the provisional international search
daltland on DSKBBV9HB2PROD with NOTICES
completion of the activities beyond that is needed to further develop and test the report and written opinion. The final
described in the Dates and Duration concept amongst all the IP5 Offices. In international search report and written
section, provided all of the following particular, this IP5 pilot project aims at opinion are subsequently established by
conditions are met: assessing user interest for a CS&E the main examiner after having taken
• A request for renewal is received no product and the expected efficiency into consideration the contributions of
later than 60 days prior to expiration of gains for the IP5 Offices. the peer examiners. Further details
the current IHA. DATES: regarding the implementation of the
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![Federal Register / Vol. 83, No. 124 / Wednesday, June 27, 2018 / Notices 30147
III. Requirements and Limitations for (b) The main International Searching ACTION: Notice of proposed amendments
Participation Authority must not have accepted 100 to the Manual for Courts-Martial, United
Applicants who would like to international applications into the pilot. States (2016 ed.) and notice of public
participate in the pilot project must be The USPTO, in its capacity as the main meeting.
aware of both the following International Searching Authority, will
accept 50 applications during the first SUMMARY: The Department of Defense
requirements to be met by applicants requests comments on proposed
and the following limitations set by the year of the pilot, that is from July 1,
2018, to June 30, 2019, and 50 changes to the Manual for Courts-
IP5 Offices. Martial, United States (2016 ed.) (MCM).
applications during the second year of
A. Requirements To Be Met by the pilot, that is from July 1, 2019, to The proposed changes concern the rules
Applicants June 30, 2020. of procedure and evidence applicable in
(c) The main International Searching trials by courts-martial as well as
The following requirements must be amendments to portions of the MCM
met by applicants wishing to participate Authority must not determine that there
is a defect in the application (e.g., the discussing the punitive articles of the
in the pilot project: Uniform Code of Military Justice. The
(a) The request for participation in the application does not contain a sequence
listing portion of the description and/or approval authority for these changes is
pilot must be submitted on the standard the President. These proposed changes
participation form and filed together a copy of a sequence listing in computer
readable form as provided for in the have not been coordinated within the
with the international application. Department of Defense under DoD
(b) The participation form and the Administrative Instructions under the
PCT) impeding the processing of the Directive 5500.01, ‘‘Preparing,
international application must be filed Processing and Coordinating
at the receiving Office of one of the IP5 application according to the timeline for
the collaborative process. Legislation, Executive Orders,
Offices or at the International Bureau as Proclamations, Views Letters, and
receiving Office, and the applicant must IV. Duration Testimony,’’ June 15, 2007, and do not
select one of the IP5 Offices as the main constitute the official position of the
International Searching Authority under The pilot project is divided into two
phases, a preparatory phase and an Department of Defense, the Military
PCT Rule 35. For example, U.S. Departments, or any other Government
applicants filing with the USPTO or the operational phase. The preparatory
phase started on June 2, 2016, and was agency.
International Bureau as receiving Office DATES: Comments on the proposed
may select the USPTO, the EPO, the dedicated to the administrative and
practical preparations required for a changes must be received no later than
KIPO, or the JPO as International August 27, 2018. A public meeting for
Searching Authority, subject to certain smooth functioning of the pilot. The
operational phase will start on July 1, comments will be held on July 11, 2018,
limitations as described in the PCT at 1:30 p.m. in the United States Court
Applicant’s Guide, Annex C/US. 2018, and will be dedicated to the
processing of applications under the of Appeals for the Armed Forces
(c) Where the participation form and building, 450 E Street NW, Washington
the international application are filed collaborative scheme, the monitoring of
applications for evaluation purposes, DC 20442–0001.
with the USPTO, they must be filed in
and the assessment of the outcome of ADDRESSES: You may submit comments,
electronic form via the USPTO’s EFS-
the pilot. The operational phase will last identified by docket number and title,
Web system. The participation form
for a period of three years ending on by any of the following methods:
must be loaded into EFS-Web as a • Federal eRulemaking Portal: http://
separate document using document July 1, 2021, and will include an
evaluation of the impact of the pilot on www.regulations.gov. Follow the
description ‘‘Request to Participate in instructions for submitting comments.
PCT CS&E Pilot.’’ This is true even examination during the subsequent
national/regional stages. Requests for • Mail: Department of Defense, Office
where the participation form is prepared of the Deputy Chief Management
using WIPO’s ePCT system since EFS- participation in the pilot will be
accepted only during the first two years Officer, Directorate for Oversight and
Web only extracts the PCT Request form Compliance, 4800 Mark Center Drive,
and Fee Calculation sheet from ePCT or of the operational phase, i.e., from July
1, 2018, to June 30, 2020. Mailbox #24, Suite 08D09, Alexandria,
PCT Safe zip files. VA 22350–1700.
(d) The participation form and the Dated: June 21, 2018. Instructions: All submissions received
international application must be filed Andrei Iancu, must include the agency name and
in English when they are filed with the Under Secretary of Commerce for Intellectual docket number for this Federal Register
USPTO. As noted above, the other IP5 Property and Director of the United States document. The general policy for
Offices will initially only accept Patent and Trademark Office. comments and other submissions from
applications filed in English and will [FR Doc. 2018–13800 Filed 6–26–18; 8:45 am] members of the public is to make these
announce when they are prepared to BILLING CODE 3510–16–P submissions available for public
accept applications in languages other viewing on the internet at http://
than English. www.regulations.gov as they are
B. Limitations Set by the IP5 Offices received without change, including any
DEPARTMENT OF DEFENSE
personal identifiers or contact
The following limitations related to information.
organizational aspects of the pilot must Office of the Secretary
be complied with for the main FOR FURTHER INFORMATION CONTACT:
daltland on DSKBBV9HB2PROD with NOTICES
International Searching Authority to [Docket ID DOD–2018–OS–0039] Lieutenant Alexandra Nica, JAGC, USN,
accept a request for participation in the Executive Secretary, JSC, (202) 685–
Manual for Courts-Martial; Proposed 7058, alexandra.nica@navy.mil. The JSC
pilot: Amendments
(a) The applicant must not have had website is located at http://
ten international applications accepted AGENCY: Joint Service Committee on jsc.defense.gov.
in the pilot by the same main Military Justice (JSC), Department of SUPPLEMENTARY INFORMATION: This
International Searching Authority. Defense. notice is provided in accordance with
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Document Created: 2018-11-06 09:52:46
Document Modified: 2018-11-06 09:52:46
| 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. | |
| Dates | Pilot Effective date: July 1, 2018. | |
| 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] | |
| FR Citation | 83 FR 30145 |
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