On July 1, 2018, the United States Patent and Trademark Office (USPTO) began a 3-year pilot program known as The PCT Collaborative Search and Examination Pilot (CS&E) Program, to streamline examination and search procedures for patent examiners in multiple countries. The program is a coordinated effort with patent offices from around the world, together known as the IP5 offices. Specifically, participating International Search Authority (ISA) members include the USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People’s Republic of China (SIPO). This program is a continuation of two previous programs launched in 2010 and 2011, respectively, involving the USPTO, EPO and KIPO that laid the groundwork for this expanded program aimed at testing user interest, operational and quality standards, and the electronic platform.
Currently, upon filing a PCT application, applicants designate one of the IP5 offices to provide an international search report (ISR) and written opinion. However, upon reaching the national stage as applicants pursue applications in individual countries, applicants can be presented with country-specific search reports involving entirely new art depending on varying search criteria. This can place a burden on applicants and hinder cohesive world-wide prosecution strategies. The CS&E program addresses this issue by coordinating searches from each office, thereby providing a higher quality work product which is more likely to comprehensively identify and consider world-wide art. The CS&E program provides the advantages of having the searching performed by multiple examiners with different language capabilities and an increased predictability of outcome. Importantly, at this time the CS&E program requires no extra cost.
As a first step in the CS&E program, applicants will still select an individual office for searching, and the selected ISA will perform a search and prepare a draft ISR and written opinion. The other four offices, designated as Peer ISAs, will review the draft, perform additional searching and provide comments back to the main ISA, which will then prepare a final ISR. The final ISR will take the views of the peer ISAs into account but will not refer to or explain any differences of opinion between offices. The sharing of documents and applications between offices will be done through the electronic system of the World Intellectual Property Organization (WIPO’s ePCT system). The contributions of the peer ISAs will be visible to applicants through ePCT once the ISR has been received and processed by the International Bureau, and will appear on the WIPO patent search database known as PATENTSCOPE once the ISR has been published. The CS&E program aims to provide earlier information from all IP5 offices. The current plan is to have the initial draft of the ISR and written opinion prepared in eight weeks or less from the time the main office receives a search copy, with peer ISAs contributing input within four weeks, and the finalization of the report taking an additional four weeks.
Despite the fact that this program is scaled-up from the previous pilot programs, the number of accepted applications is still limited. Each main ISA aims to accept approximately 100 international applications into the pilot, spread over the course of two years. Each office will also accept approximately 400 applications in its role as peer ISA. The third year of the program will be used to study the impact of the program on the national stage. Applicants are limited to 10 international applications.
If applications are submitted in a language other than English, the ISA will require an English translation within one month of the mailing date of the provisional acceptance of the application into the pilot. The IP5 offices have agreed that at a later point in the pilot, the requirement for an English translation will be reconsidered, and it is possible that a decision will be made to directly accept applications in other languages at that time. Participation in the pilot requires a request to be submitted with the application when filed, and though the form is available in Chinese, French and German, at this time the request submitted with the application should be in English. This request can be generated using the ePCT system, or can be uploaded in the form of an editable PDF available on the WIPO website.
Though this is a limited program, it is likely a glimpse into the future of searching and examination procedures, as it offers the opportunity for a more complete and high quality search as part of a program that will take into account applicant feedback to overcome any unforeseen difficulties of this coordinated effort. In submitting the request, applicants are required to agree to provide feedback at the end of the CS&E program upon ISA request. Additional information on the CS&E program can be found at the WIPO, USPTO and fiveIPoffices.