February 21, 2019
By Noel Courage and Donald Bocchinfuso
Several patent offices have launched a “Collaborative Search and Examination” Pilot Project (“CS&E”), which will allow examiners from key patent offices to collaborate on examination of PCT Applications. The goal of the CS&E is to provide better quality patent searches and examination. To encourage use of the CS&E, there is currently no fee for this extra examination; however, the intent is to eventually charge. This article will provide an overview of the CS&E process. Patent applicants interested in using the program may be still be able to access a spot, depending on the capacity of the available patent office and search authority. There will also be new cohorts of applications accepted in 2019 (check with your available IP5 patent office, and act fast if it is of interest — spots are limited).
The CS&E Project started in July 2018, and will run for three years. Detailed information is online, for example, at the WIPO, USPTO and EPO web sites. The first two years are operational, and the third year is to analyse the CS&E’s impact. Unlike previous pilot projects, applicants choose whether they want to apply for the CS&E. Applying is simple — applicants submit a participation request together with their PCT application to one of the IP5 offices (USPTO, EPO, JPO, KIPO, or CNIPA) or the International Bureau. For now, only applications in English are eligible to participate, but applications in other languages will be accepted down the road.
CS&E applicants must select one of the IP5 offices as a main International Search Authority (“ISA”). After the main ISA prepares a preliminary search report, examiners from the other four IP5 offices provide comments on the report and may perform additional searching as peer ISAs. The main ISA then prepares a final report based on this peer analysis. The collaborative final report should provide a better quality, more thorough patent search compared to a search by one patent office. This will help patent applicants make more informed decisions about how aggressively to file in individual countries (hopefully avoiding prior art surprises when individual patent offices review the application later). The final reports are not binding on individual countries, but may help facilitate prosecution.
Each IP5 office will process approximately 100 applications as a main ISA, and approximately 400 applications as a peer ISA over the two operational years. Each applicant is limited to 10 accepted CS&E applications per main ISA.
To be accepted into the CS&E, the main ISA must not have found a defect in the application that would impede processing of the application on the CS&E timeline. Specifically, the CS&E process is expected to take a maximum of 16 weeks from initial receipt by the main ISA to the final report and opinion — 8 weeks for the preliminary search, 4 weeks for peer review, and 4 weeks for the final report.
The EPO has described the response by patent applicants as “overwhelmingly positive” and it reached its quota for the first cohort in Fall 2018. The EPO took on 10 additional French and German patent applications in January 2019, and will take English applications again starting July 1, 2019.
We consider the CS&E process to be a good option. There is no downside in giving more searching to applicants that want it. Some patent applications may be more likely to fall by the wayside, but hopefully those that make it through will be better quality, and more resistant to challenge. A point to keep in mind is that patent offices, even when collaborating, have limited time and resources to search for prior art information that affects novelty and inventiveness. The determination of an accused infringer often leads to more intensive searching to identify prior art, so the improved resiliency of CS&E patents is really only with regards to prior art that will typically get in front of the patent offices.
This article was first published in the AIPPI eNews.
Information on this website is for information only. It is not, and should not be taken as, legal advice. You should not rely on, or take or not take any action, based upon this information. Professional legal advice should be promptly obtained. Bereskin & Parr LLP professionals will be pleased to advise you.