USPTO Extends Combined Search Pilot Program with Japanese Patent Office
The United States Patent Office has announced an expansion of the Collaborative Search Pilot Program beginning November 1, 2022. This announcement signals the beginning of phase three of the pilot program, which will last until 2024. The program initially began in 2015 to accelerate examination by combining the search expertise of examiners at the USPTO and the JPO, providing more comprehensive prior art searches to Patent Applicants.
Patent Applicants should benefit from the program due to the increased collaboration with the Japanese Patent Office. The program’s goal is to provide better predictability in examination between the two patent offices. Increased harmonization between the US and Japanese Patent Offices increases Patent Holder certainty regarding their IP rights in both countries. The pilot program may also enable an expedited first action on merits.
The additional collaboration between the Japan Patent Office and the US Patent and trademark office will also provide patent applicants with a more comprehensive prior art search.
For example, references cited in a first examination result in Japan can be directly communicated to the USPTO. This collaboration between the two patent offices reduces the burden on patent applicants to file information disclosure statements (IDS) to the USPTO. The pilot program also benefits Applicants by simultaneously providing examination results for a group of related applications.
Most importantly, the collaborative Patent search program is free to Applicants
Patent Applicants seeking to enter the program only need to file the corresponding petition to enter the program. To apply for the combined search program, Applicants should submit the corresponding petition within fifteen days of filing the patent application. Once approved for the program, examination results should be sent in around 100 days. The time difference between the two patent offices can be around one month in certain circumstances.
When a petition is submitted to enter into the combined search program, the JPO will notify the Applicant of their approval or disapproval of the application. Currently, a maximum of 400 applications can be filed using this program for the next two-year period. While this may not seem like a lot, less than 100 applications have been approved throughout the program’s entire history.
To qualify for the Combined Patent Search program, there are certain application-specific requirements.
The application must contain at most three independent claims and should be at most twenty total claims. A corresponding application in the JPO and the USPTO must contain substantially corresponding independent claims. The application must be ready for examination, but examination has yet to commence on the application. Suppose the application is not ready for examination. In that case, the Applicant can check the status of their case online, using the patent information platform for a published application (J-PlatPat), or making an individual inquiry.
If a petition to enter the program is filed before the corresponding US application has been published, then the copy of the corresponding claims should be submitted along with the patent application. The corresponding application must share the same priority date to qualify for the program. Additionally, the earliest priority date must be after March 16, 2013. While applications to the program may be filed on a per-application basis, a group of technically related applications may be filed together in Japan. However, there can be up to five applications in the group when filing in Japan. If the patent application has been filed under accelerated examination, the application can only apply for the combined search program if the Applicant withdraws from the accelerated examination procedure.
Accordingly, Applicants seeking to expand their patent portfolios in Japan and the US simultaneously should consider filing under this program. The increased harmonization and expanded search capabilities ensure that patent holders can be sure of their intellectual property rights in both countries.
John DeStefano, is a patent and technology technical advisor at Founders Legal. He received his Bachelor’s Degree in Electrical Engineering from Missouri University of Science and Technology (Rolla) and is pursuing a J.D. at Franklin Pierce School of Law with a focus on Intellectual Property.