Nov 14, 2022
Japan: USPTO – JPO Collaborative Search Pilot Program Expansion and Simplified Procedure
USPTO – JPO Collaborative Search Pilot Program Expansion and Simplified Procedure
The Collaborative Search Pilot Program (CSP), which began on August 1, 2015, with the goal of accelerating examination and providing the applicant with more comprehensive prior art by combining the search expertise of examiners at the USPTO and JPO, has been extended for another two years starting November 1, 2022. (Phase 3).
Program Benefits:
1. Better predictability in examination across offices leading to more certainty of IP rights.
2. Expedited first action on merits (FAOM)
3. Combined search expertise provides more comprehensive prior art. Japanese examiner presents references (cited references and prior art references) in the first examination result (FA), and the USPTO examiner will include the presented references in the PTO-892, which in turn helps to reduce the burden of submitting an information disclosure statement (IDS) to the USPTO.
4. Ability to obtain examination results for group applications almost at the same time.
5. It is free to file a CSP petition.
Requirements for Japanese applications to be searched:
1. A corresponding U.S. patent application must exist
2. Application meets all the application requirements*¹; and
3. the U.S. patent application also meets the requirements on the US side (English version).
How to apply:
Since the procedures have been simplified, the applicant only needs to submit an application for a Japan-US cooperative search (unified application form) to one of the respective patent offices. The applicant may file a CSP application to one or the other patent office within 15 days from the day the application is submitted. There is no application fee.
Notification of approval or disapproval of participation:
The JPO will inform the applicant of the approval or disapproval of the application.
The number of applications is limited to 400 in order of which they were received (approved) by the two offices during the period. For reference, less than 100 applications have been approved before.
Examination Results
On average, examination results (FAs) are sent out to applicants in about 100 days after approval of participation. The time lag between two offices is about one month.
*¹ Application Requirements:
1. The application must contain no more than 20 claims and no more than 3 independent claims.
2. There must be a corresponding application with substantially corresponding independent claims in the other Office.
3. The application is ready for examination and has not yet started examination. If the case is not ready to start, the applicant will be informed and may check the status of the case by (i) requesting online access (for a fee), (ii) viewing the Patent Information Platform (J-PlatPat) (for published applications only), or (iii) making an individual inquiry.
“Prior to the arrival of examination” means prior to the arrival of any of the following notifications, etc. by the examiner, etc.
Notice of reasons for refusal (Article 50)
A copy of the patent decision (Article 52(ii))
Notice of violation of the obligation to disclose prior art references in the specification (Article 48-7)
Consultative order in the case of identical inventions and applications filed on the same day (Article 39(vi))
4. An application may be filed regardless of whether or not the application has been published. However, if the application is not yet published at the time of application, a copy of the corresponding claims of the US application must be submitted.
5. The earliest priority date of the corresponding independent claims must be the same.
6. The earliest priority date or filing date of all applications must be on or after March 16, 2013.
7. An application may be filed for the JP-US Cooperative Search at the same time as the request for examination.
8. Applications must be filed on a per-application basis. However, a group of technically related applications may be filed together in Japan. The maximum number of collective applications shall be approximately five.
9. No application for Summary Examination, Accelerated Examination, or Super Accelerated Examination for Business Strategies has been filed, however, if an application is withdrawn, the applicant may apply for CSP.
For details, please refer to the JPO website: Japan-U.S. Collaborative Search Pilot Program.