Improving Patent Quality With International Collaborative Search Pilot Programs

by Foley & Lardner LLP
Contact

The USPTO has launched two new programs aimed at improving patent quality by joining forces with the Japanese Patent Office (JPO) or the Korean Intellectual Property Office (KIPO) at the initial stages of the patent examination process. The JPO pilot program seems the most likely to have an impact on examination, but the USPTO will be evaluating both programs to see if one or the other is more effective.

JPO Pilot Program: Serial Search And Evaluation

The USPTO describes the JPO pilot program as a “serial search and evaluation program,” because the first examiner will provide his or her search and preliminary evaluation results to the other examiner before the other examiner undertakes examination. The other examiner will consider the first examiner’s search and preliminary evaluation results, generate his or her own search and preliminary evaluation results, and share those results with the first examiner. Then, both examiners will prepare and send examination reports to the Applicant(s).

The USPTO has provided this diagram of the JPO pilot program workflow:

Applications must be filed and pending in both countries, and petitions to participate in the program must be filed and accepted in both patents offices. (The USPTO does not charge any fees to participate in this program, but the JPO may charge an administrative fee.) Selection of the “first” examiner will be based whether the application has an earlier U.S. or Japanese priority rate, or will be determined by the patent offices.

U.S. applications in this program will be examined under the First Action Interview pilot program. When the USPTO examiner is the “first” examiner, he or she will send a (draft) Pre-Interview Communication (PIC) to the JPO examiner, consider the JPO examiner’s search results, and then send a (final) PIC to the Applicant, who then can elect how to proceed under the First Action Interview program (e.g., request an interview or elect to treat the PIC as the first Office Action). Possible advantages to Applicants in this program include expedited examination and a more thorough evaluation early in the examination process.

More details on the JPO Collaborative Search Pilot Program are found in this Federal Register Notice.

KIPO Pilot Program: Parallel Search And Evaluation

The USPTO describes the KIPO pilot program as a “parallel search and evaluation program,” because the examiners will conduct examination independently, and the other’s results may not inform or impact the first examination reports. As explained by the USPTO, an examiner will wait to send his or her report to the Applicant until the other report is received, but might not take the other report into account when preparing the first report.

The USPTO has provided this diagram of the KIPO pilot program workflow:

As with the JPO pilot program, applications must be filed and pending in both countries, and petitions to participate in the program must be filed and accepted in both patents offices. (The USPTO does not charge any fees to participate in this program, but the KIPO may charge an administrative fee.)

Also as with the JPO pilot program, U.S. applications in this program also will be examined under the First Action Interview pilot program. After the examiners have exchanged search results, the USPTO examiner will send the PIC and the KIPO examiner’s results to the Applicant, who then can elect how to proceed under the First Action Interview program. Possible advantages to Applicants in this program include expedited examination and early receipt of search results from both offices.

More details on the KIPO Collaborative Search Pilot Program are found in this Federal Register Notice.

Assessing The Impact Of International Collaboration

For each program, each patent office will accept 200 applications as the primary patent office, for a possible total of 400 applications in each program. The USPTO is interested in determining whether either program has an impact on examination, and whether it makes a difference if results are shared before or after the first examination report is written. The JPO pilot program seems to have the most potential to impact examination, since the first examination reports will reflect the search and evaluations of both examiners. On the other hand, the worksharing under the KIPO pilot program seems to duplicate what applicants already should be doing–making international search results of record in parallel U.S. applications–but perhaps USPTO examiners will give more consideration to KIPO search results under this program.

View This Blog

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley & Lardner LLP | Attorney Advertising

Written by:

Foley & Lardner LLP
Contact
more
less

Foley & Lardner LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.