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Effective March 29, 2022, the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will accept a new combined petition option to participate in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is currently active through Oct. 31, 2022, with each intellectual property (IP) partner office granting only 400 petitions per year. The new combined petition option (and the original petition option) offers an easy path to expedite initial examination of a patent application under “special” status without incurring government fees or fulfilling other requirements under 37 CFR § 1.102.

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In contrast with the original petition option, applicants need file the petition only with the USPTO or its IP partner office – the JPO or the KIPO – under the new combined petition option. To request participation in the pilot between the USPTO and the JPO, applicants may file combined petition Form PTO-437-JP with either the USPTO or the JPO. Alternatively, to request participation in the pilot between the USPTO and the KIPO, applicants may file combined petition Form PTO-437-KR with either the USPTO or the KIPO. In so doing, the combined petition will be placed in the file wrapper of both counterpart patent applications.

Importantly, the above-mentioned IP partner offices have agreed to submit the petition form to the corresponding partner IP office within 15 days of receipt under the new combined petition option. This significantly reduces the likelihood of the counterpart application being acted upon by an examiner. If this were to transpire, both applications would be denied entry into the Expanded CSP program. Separately, and equally as relevant, search results from a designated IP partner office not received by an examiner within 4 months from the date the USPTO grants the petition will not be included in a first action on the merits (FAOM). The examiner will inform applicants if any designated partner IP office fails to provide search results prior to the FAOM being mailed.

Beware, however, that the combined petition option may not be appropriate in every situation. This may be the case when a patent application in a pilot program corresponds with more than one counterpart patent application in a partner IP office. In this situation, the original petition option must be used to request participation in the Expanded CSP program.

<strong>Details of the</strong> <strong>Expanded CSP Program</strong>

The Expanded CSP program affords applicants the opportunity to receive an accelerated examination and robust search results from the USPTO and a partner IP office before an examiner mails the FAOM.&nbsp;At least in theory, greater consistency in examination may be obtained when different patent offices are equipped with the same pool of search results. The complete requirements for participating in the Expanded CSP program can be found in the Federal Register at <a href="https://www.federalregister.gov/documents/2021/02/04/2021-02342/expanded-collaborative-search-pilot-program-extension">https://www.federalregister.gov/documents/2021/02/04/2021-02342/expanded-collaborative-search-pilot-program-extension</a>.

Applicants may strategically benefit from the Expanded CSP program both pre- and post-grant. Besides the petition being free of government fees as a vehicle to expedite initial examination, applicants may reasonably expect to spend less evaluation time on the front end when faced with similar cited art in counterpart applications. Additionally, fees incurred for preparing and filing information disclosure statements based on early cited art in a counterpart application could be reduced. Post-grant, applicants with more consistently aligned claims throughout their counterpart applications may realize strategic value when structuring and negotiating patent licensing/sale transactions.

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Tayan B. Patel

New Combined Petition Option for the Expanded Collaborative Search Pilot Program – Is It Worth Implementing Into Your International Patent Portfolio Strategy?