US-JP Collaborative Search Pilot Program January, 2016 Japan Patent Office 0 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 1 US-JP CSP ~ Flow of CSP ~ 2 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 3 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 4 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 5 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 2 USPTO Number of Petitions Received 2 12 Granted Petitions 14 14 The number of petitions is officially posted on USPTO web page. (http://www.uspto.gov/patents-getting-started/international-protection/collaborativesearch-pilot-program-csp) 6 Thank You! 7
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