Earlier this month, the U.S. Patent and Trademark Office announced two new collaborations with the Japan Patent Office. In a press release issued on July 1, the USPTO announced an agreement with the JPO in which the JPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO as the Receiving Office (RO/US), under the Patent Cooperation Treaty.
The agreement, which took effect on July 1, 2015 and will run until June 30, 2018, will provide applicants with an additional option for applications in which the claims are directed to the field of green technology as defined by certain International Patent Classification classes. Under the agreement, an applicant may choose the JPO as competent authority for a given application if the application is submitted in English, the claims are directed to the field of green technology, and the JPO has not received more than 5,000 international applications from the USPTO during the three year period of the agreement, not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years. The USPTO noted that further details regarding the International Patent Classification classes that will define the field of green technology under the agreement will be made available on the USPTO website.
In a notice published in the Federal Register (80 Fed. Reg. 39752), the USPTO announced that it was initiating a Collaborative Search Pilot Program (CSP) with the JPO to study whether the exchange of search results between the two offices for corresponding counterpart applications will improve patent quality and facilitate the examination of patent applications in both offices. The notice indicates that during the pilot program, each office will conduct a search for its corresponding counterpart application and exchange the results with the other office before either office issues a communication on patentability. The pilot program will take effect on August 1, 2015 and last for two years, with participating applications limited to 400 per year.
The USPTO will use the First Action Interview Pilot Program (FAI) in this search results work sharing pilot program, because its procedure bifurcates the determination and evaluation of a prior art search from the notice of rejection. Applicants wishing to participate in the program will also have to file a Petition to Make Special (via the EFS-Web). However, the USPTO indicated that the petition fee will be waived for applications participating in the pilot program. Additional requirements for participation in the pilot program can be found on pages 39754-55 of the USPTO's notice.
Additional information regarding the CSP with the JPO (as well as a similar program with the Korean Intellectual Property Office) can be found here.
