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Home > JPO Activities > US-JP Collaborative Search Pilot Program

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US-JP Collaborative Search Pilot Program

October 27, 2017
ADMINISTRATIVE DIVISION

1.Introduction

In recent years, there has been an increasing need for obtaining patent rights in foreign countries where manufacturing hubs and customers are located amidst the acceleration of globalization of business activities including those of Japan. (The number of foreign patent applications filed by Japanese companies in 2015 was approximately 200,000.)

In order to provide assistance to globally active Japanese companies acquiring patent rights in foreign countries, the Japan Patent Office (JPO) has been enhancing cooperation framework for collaborative examination between the JPO and the United States Patent and Trademark Office (USPTO), and as the world’s leading IP Office, the JPO started with the world’s first Patent Prosecution Highway (PPH) Program between the two JPO and the USPTO in 2006.

At the same time, with regard to the quality and content of patent examination being performed by the JPO, it needs to make further efforts to establish the Intellectual Property (IP) System, enabling “a patent granted by the JPO would be granted by other IP Offices with a certainty” through the realization of the “World’s Fastest and Utmost Quality in Patent Examination”.

In light of this situation, the JPO and USPTO agreed to make joint efforts to enhance the quality of patent examination through collaboration between the JPO and USPTO examiners, and commenced the US-JP Collaborative Search Pilot Program (hereinafter referred to as “US-JP CSP”) according to the Memorandum of Cooperation (MOC) signed in Suzhou, China on May 21, 2015,from August 1, 2015.

The US-JP CSP terminated upon the expiration of the two years’ pilot program on July 31, 2017. Then, as a result of coordination between the two Offices, the JPO and the USPTO agreed to resume the US-JP CSP in the new scheme on November 1, 2017. The pilot period has been set to three years.

2. US-JP CSP

The US-JP CSP is a program in which the JPO and USPTO examiners examine a patent application filed with both the JPO and USPTO respectively to share search results along with their opinions and provide the initial examination results from the two IP Offices early to the applicant during the same time period.

Consequently, it is expected that the pilot program will enable Japanese companies to better predict the next steps in patent prosecution for the applications filed with the two IP Offices (timing of examinations/when a patent will be granted) and would also promote global business expansion by acquiring more stable and stronger patents in both countries earlier and simultaneously based on the examination results provided by the JPO and USPTO examiners.

Furthermore, if a group of technically-related applications were filed with the JPO, the examiners of the two Offices shall send the initial examination results to an applicant in the same time period, allowing the applicant to receive the examination results of those applications during the same time period.

3. Applications eligible for the US-JP CSP

An application filed with the JPO (hereinafter called “JP application”) can participate in the US-JP CSP if it meets the minimum requirements of filing a corresponding application with the USPTO (hereinafter called “US application”) and satisfying all the requirements mandated by the JPO. In addition, the corresponding US application will also need to satisfy the requirements mandated by the USPTO (External link). Furthermore, the JPO and USPTO accept unpublished applications into the US-JP CSP.

<Request Requirements>

  • (1) The application must contain three or fewer independent claims and twenty or fewer total claims.
  • (2) Each independent claim in a JP application shall substantially correspond to each one of the independent claims in a corresponding US application. A decision as to whether independent claims of the two applications substantially correspond with each other or not will be made on a case-by-case basis, however, it shall be considered to be “substantially correspond with each other” if independent claims in the JP application are of the same scope as those in a corresponding US application.
  • (3) A patent application is ready to be examined, and substantive examination has not begun on the patent application yet. In this regard, a copy of the claims in the corresponding US application must be submitted to the JPO if the application is unpublished at the time of filing of a request form for the US-JP CSP.
    With regard to an application being ready to be examined, if the application for which a request for the US-JP CSP has been filed is not ready to be examined, the JPO official will contact the applicant. Also, applicants can check the status of applications by either:
    • (i) making a request online to the JPO (paid services) or
    • (ii) accessing the J-PlatPat on the JPO website (available for published applications only).
    In addition, applicants can contact Examination Policy Planning Office, Administrative Affairs Division at 03-3581-1101 ext. 3103.
    “Substantive examination has not begun on your patent application yet” means that none of the notifications listed below issued either by the Commissioner or an examiner of the JPO has not been received yet.
    • Notice of Reasons for Refusal (Article 50 of the Patent Act)
    • Certified Copy of the Examiner's Decision (Article 52 Section 2 of the Patent Act)
    • Notice of Failure to Disclose Prior Art in the Patent Description (Article 48 (7) of the Patent Act)
    • Order for Consultation in a case where two or more patent applications for the identical invention(s) were filed on the same date (Article 39 Section 6 of the Patent Act)
  • (4) Earliest priority dates of independent claims in the application and those in the corresponding application shall be the same.
  • (5) Both the JP and US applications shall have the earliest priority date and filing date after March 16, 2013.
  • (6) A request for examination has already been submitted at the time of request for the US-JP CSP (The request for examination can be made at the same time the request for the US-JP CSP is submitted).
  • (7) A request for US-JP CSP shall be filed for each patent application. However, a group of technically-related applications can be filed with the JPO. In that case, a group of applications shall consist of five or less applications.
  • (8) Requests have not already been made for Collective Examination for IP portfolio supporting Business Strategy, Accelerated examination, or Super-Accelerated examination. However, in cases where such requests have been made, applications will still qualify for the US-JP CSP if a request of withdrawal for such is made.

4. Request for the US-JP CSP

4.1. How to Participate in the US-JP CSP

In order to participate in the US-JP CSP, an applicant is required to file a request form with the other IP Office within 15 days after he/she filed the request form with one of the two IP Offices. A request form for the US-JP CSP is available for download at the following link. The applicant is required to fill in all the necessary items on the form and mail it to the JPO at the e-mail address below, setting a password.

If the application is unpublished at the time of filing of the request form for the US-JP CSP, the US-JP CSP request form and a copy of the claims in the corresponding US application at the time of filing must be submitted to the JPO via e-mail with an encrypted password.

Make sure to password-protect the data to be e-mailed since these claims include unpublished data, and also to separately email the password to the JPO at the e-mail address below.

Request form for the US-JP CSP (Excel: 264KB)

E-mail to: PA2260@jpo.go.jp
Examination Policy Planning Office, Administrative Affairs Division,
Patent and Design Examination Department, Japan Patent Office

4.2. Determining Eligibility for the US-JP CSP

The JPO will make a decision as to whether an application satisfies the requirements under the US-JP CSP or not and inform the USPTO of its decision. At a later date, the JPO will inform the applicant of the decision taking into account the decision made by the USPTO via e-mail.

The workflow process from receipt of a request form for the US-JP CSP to notification of eligibility to an applicant is described below.

(image)From request for US-JP CSP to notification of eligibility to an applicant
[Fig. 1] From request for US-JP CSP to notification of eligibility to an applicant

It is free of charge to file a request for the US-JP CSP with IP Offices.

<Things to be kept in mind before filing a US-JP CSP Request>

  • The number of applications which can be filed with (and accepted by) the two IP Offices is up to 400. Once the maximum number of the applications is reached at the two IP Offices, the Offices will stop accepting requests.

5. Workflow Process under the US-JP CSP

The workflow process under the US-JP CSP after the JPO notified an applicant of the acceptance for participation is shown as below;
The same workflow process applies to both cases of JPO as the Office of First Search and USPTO as the Office of First Search.

(image)Workflow process under the US-JP CSP
[Fig. 2] Workflow process under the US-JP CSP

6. Other things to be kept in mind

  • As a general rule, the two IP Offices shall notify the applicant of the initial examination results within four months after granting a request for the US-JP CSP, however, in case where the USPTO is unable to send its draft to the JPO for some reasons in four months after granting a request for the US-JP CSP, an officer of Administrative Affairs Division of the JPO shall send a notice to the applicant to inform him/her that “Four months have already passed since the JPO granted your request for the US-JP CSP, however, we have not received the examination results from the USPTO as of today. Therefore, the JPO is sending the initial examination results to you based on the examination results provided by the JPO only.”
  • In order to improve the US-JP CSP even further, the JPO intends to implement a customer satisfaction survey after notifying an applicant of the initial examination results. Please kindly spare your time to answer the questionnaire if we ask for your cooperation.

If you need more information about US-JP CSP, please refer to following page.

7. Press release

●Japanese Page

[Last updated 11 January 2018]

Contact Us

Examination Policy Planning Office

Administrative Affairs Division

Patent and Design Examination Department

Japan Patent Office

Tel: +81-3-3581-1101 (ext. 3103)

E-mail : PA2260@jpo.go.jp

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