In a Patent Alert e-mail distributed last week, the U.S. Patent and Trademark Office announced that beginning July 1, 2019, the Office would once again be accepting new International applications to the IP5 Patent Cooperation Treaty (PCT) Collaboration Search and Examination (CS&E) pilot program.  In a notice published in the Federal Register last year (83 Fed. Reg. 30147), the Office announced its first year of participation in the pilot program, which ran from July 1, 2018 until June 30, 2019.  The second year of the Office's participation in the program begins tomorrow and runs through June 30, 2020.  The pilot program was initiated to assess user interest for a CS&E product (i.e., an International search report and written opinion prepared by collaborating examiners from the IP5 Offices), as well as whether the collaboration results in efficiency gains by the IP5 Offices.

Under the CS&E pilot program, examiners from the U.S. Patent and Trademark Office (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO) and National Intellectual Property Administration (CNIPA) (formerly the State Intellectual Property Office of the People's Republic of China, or SIPO), otherwise known as the IP5 Offices, collaborate on one International application for the establishment of an International search report and written opinion under PCT Chapter I.  Applicants choosing to participate in the program select one of the five IP5 Offices as the International Searching Authority, and an examiner from that Office (the main examiner) establishes a provisional International search report and written opinion, which is distributed to the other Offices.  Examiners in the other Offices (peer examiners) then provide their contribution, and the main examiner establishes a final International search report and written opinion after taking those contributions into account.

Applicants wishing to participate in the pilot program via the USPTO (once the second year begins tomorrow) must meet the following requirements:

(1) Submit a request for participation (form PCT/RCSE) with the International application.

(2) Select one of the IP5 Offices as the International Searching Authority.

(3) File the participation form and International application electronically via the EFS-Web (for the participation form, Applicants should use the document description "Request to Participate in PCT CS&E Pilot").

(4) File the English-language version of the participation form and file the International application in English.

(5) Have not had 10 International applications accepted into the pilot by the same International Searching Authority.

As with the first year of the program, the USPTO will only be accepting 50 applications during the second year of the program (the USPTO reached that limit in the first year of the pilot program as of at least January 2019).  In addition, applications that the International Searching Authority determines have a defect which impedes the processing of the application will be denied entry into the pilot program.

Additional information regarding the CS&E pilot program can be found at the USPTO's CS&E webpage or the World Intellectual Property Organization (WIPO) CS&E webpage.