IP Law Bulletin

Currently, U.S. applications that are pending with the USPTO and have counterpart applications in other jurisdictions may have search results and prior art cited in their foreign counterparts by the foreign IP office. These search results and prior art are then often submitted by way of an Information Disclosure Statement (IDS) to the USPTO for consideration of its relevance to patentability. However, if examination on the merits in the U.S. application has already occurred, a significant delay can ensue, one which could have been avoided if the U.S. examiner was aware of the foreign office's search results before examining the U.S. application. Specifically, the presence of the new art that results from the search by the partner IP office can necessitate the formulation of a new rejection in a follow-up office action by the USPTO, where the first action on the merits could have contained the rejection had the art been in front of the USPTO examiner in the first instance. Having an extra round of back-and-forth with the USPTO examiner extends pendency of applications and results in accrual of additional costs to applicants in the form of attorney time. Additionally, if the U.S. application has been expedited, it is possible that it may reach final disposition (after Final Office Action, after Notice of Allowance, or after patent issue) before applicant receives the search results from the partner IP office. Delayed receipt of these search results can necessitate filing of a Request for Continued Examination (RCE) or a withdrawal from issue to have the references considered, which dramatically increases the cost to applicants, or, in the case of an already issued patent, may bring the validity of the patented claims into question.

Under the Expanded CSP, each designated partner IP office conducts a prior art search, with each office’s results being shared between the designated partner IP offices substantially simultaneously—before an office action is issued in any IP office, thus eliminating any such delay. To ensure that no action on the merits occurs in any of the designated applications, the applications are accorded special status, rather than being taken up for examination in the order of their U.S. filing date, which also helps reduce application pendency times. Moreover, the references cited in the initial search by any partner IP office instantly become of record in the USPTO application, which reduces the burden and the cost on the applicant to file IDSs. It also allows examiners in all partner IP offices to have a comprehensive set of references when determining patentability of the claims.  

How to Apply and Requirements for Qualifying for the Expanded CSP:

• File a Petition to Make Special using Form PTO/SB/437 in a U.S. application. There is no fee for filing this petition, or for participating in the Expanded CSP. Additionally, the U.S. application must be complete and eligible to receive a filing receipt when the petition is filed. 
  • The Petition to Make Special must be filed before examination on the merits has commenced.
  • The petition filed in the USPTO and any request filed in a designated partner IP office must be filed within 15 days of each other.
  • The petition must include a claims correspondence table for establishing “substantial corresponding scope” between all independent claims in the U.S. application and the counterpart applications.
• File a request in the corresponding counterpart applications in each partner IP office that complies with the requirements of that office.
• The application must also comply with the following:
  • The application is a non-reissue, non-provisional utility application or an international application that has entered the national stage, with an effective filing date of March 16, 2013 or later.
  • The U.S. application and all corresponding counterpart applications have a common earliest priority date of March 16, 2013 or later.
  • The disclosures of the U.S. application and all counterpart applications support the claimed subject matter as of a common date.
  • The application must have 3 or fewer independent claims and 20 or fewer total claims with no multiple dependent claims for the U.S. applications. Excess claims or multiple dependent claims can be canceled via preliminary amendment. 
  • Telephone restriction practice will be followed if the pending claims are not determined to not be directed to a single invention.

Because the Petition to Make Special must be filed before examination, we encourage applicants to file the petition with the filing of the application or, at the latest, prior to the application being docketed to an examiner, as examination can begin shortly thereafter. For applications that are already assigned to an examiner, applicants should contact the examiner to inform them that a petition for participation in the Expanded CSP will be filed. In order to be approved to participate in the Expanded CSP, at least one designated partner IP office must grant the request. Additionally, examination must not have commenced in the counterpart applications in these designated partner IP offices when the Petition to Make Special is filed with the USPTO. 

After the petition is granted, each of the USPTO and partner IP offices have four months to share search results with one another. These search results are then considered by the USPTO examiner when issuing the first office action on the merits. Search results that are not received by the USPTO within four months from the date the petition was granted may not be included in the office action and the examiner will notify the applicant if the search results of any partner IP offices were not included in the office action. After issuance of the office action, the application is no longer considered special under the Expanded CSP and patent examination continues in its regular course in each jurisdiction. 

For more details about the requirements and formalities of the Expanded CSP, please visit the USPTO’s Collaborative Search Pilot Website.