Yanagisawa - US-JP Collavorative Search PilotProgram_2016

US-JP Collaborative Search Pilot Program
January, 2016
Japan Patent Office
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US-JP Collaborative Search Pilot Program
JPO and USPTO launched the Collaborative Search Pilot Program (US-JP CSP) on August 1st, 2015.
Examiners in JPO and USPTO conduct their own search about patents applied for both JPO and USPTO, and the
search results along with their opinions are shared.
Examiners in JPO and USPTO contemporaneously notify applicants of First Office Action.
Applicants can acquire earlier, contemporaneous, stronger and more stable patent rights.
1. Request for CSP
2. Sharing the search results
between the two offices
Prior Art Search
Application
Application
Prior Art Search
3. Contemporaneous
First Office Action
Opinion of
Patentability
Opinion of
Patentability
First
OA
First
OA
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US-JP CSP ~ Flow of CSP ~
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US-JP CSP ~ Requirements ~
Requirements of JPO
(1) The application must contain three or fewer independent claims and twenty or
fewer total claims
(2) For each independent claim, corresponding application is filed with USPTO
containing substantially corresponding independent claim
(3) Request is made prior to start of examination and subsequent to laying open
(4) Same date as the earliest priority date of corresponding independent claim
(5) All of the priority dates or the filing dates are subsequent to March 16, 2013
(6) Request for the US-JP CSP is made at the same time as or after request for
examination
(7) Request is made for each application unit. However, with respect to requests made
to JPO, a group of applications technologically related may be combined as one
requesting unit. Combination of the said applications should be limited to around
five applications per requesting unit.
(8) Collective Examination for IP portfolio supporting Business strategy, accelerated
examination or super-accelerated examination are not requested
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US-JP CSP ~ Request Method ~
Applicant must file request form in the USPTO and JPO within fifteen days of each other.
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.
Applicant
JPO
(1)Application of
request form of CSP
Receipt of application
of request form
Acceptance of
request form
(2)Delivering
request form
(3)Making up and
submission of request form
Determine whether request
is acceptable or not
USPTO
Within 3
months from
submission
(4)Notification of the result
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US-JP CSP~Flexibility in setting scope of rights~
Unlike the PPH, an applicant can amend claims freely after First
Office Action is notified.
Setting scope of rights is flexible.
In requesting for
US-JP CSP
OFS
After First OA
 Possible to review search
results of both offices from
the start.
Claim A
 Flexibility in setting scope of
rights.
Correspondence
Claim A+α
OFS
Amendment
First OA
Correspondent
application
Claim A+β
Correspondent
application
Claim A
OSS
Applicant
OSS
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US-JP CSP ~Benefits and Current status~
Benefit
More accurately predictability when users can acquire patent rights on
their inventions.
Acquisition of stronger and more stable patent rights.
Current status
JPO-USPTO CSP (Launched 8/1/15)
First Office
Second Office
JPO Number of Petitions Received
12
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USPTO Number of Petitions Received
2
12
Granted Petitions
14
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 The number of petitions is officially posted on USPTO web page.
(http://www.uspto.gov/patents-getting-started/international-protection/collaborativesearch-pilot-program-csp)
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Thank You!
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