• HOME
  • Announcements
  • Obtaining IP Rights
  • JPO Activities
  • Statistics ⁄ References
  • About JPO
  • FAQs

Home > Obtaining IP Rights > Patents > US-JP Collaborative Search Pilot Program

Main content starts here.

US-JP Collaborative Search Pilot Program

July 1, 2015
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. (Over the past 10 years, the number of foreign patent applications filed by Japanese companies has risen by 40% from approx. 140,000 to 200,000).

In these ten years, 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 commence 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, effective August 1, 2015. The pilot will run for two 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 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

Furthermore, in order to make the JP-US CSP more accessible, the JPO and USPTO decided to ease their requirements for participation in the CSP, effective August 1, 2016, accepting unpublished applications into the CSP, which were considered ineligible previously.

<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) Substantive examination has not begun on your 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 CSP.
    “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

Effective August 1, 2016, unpublished applications will be accepted into the JP-US 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. Those who wish to participate in the CSP are required to make a request to the JPO for sending a request form via e-mail at any time. The applicant must inform the JPO of his/her intention to participate in the CSP along with an e-mail address and phone number of a person responsible for the request for a reply. A patent agent is also allowed to make a request, however, a JPO officer may contact him/her for double-checking if the relationship to the applicant is unclear.

Please contact us by e-mail at: PA2260@jpo.go.jp
Examination Policy Planning Office, Administrative Affairs Division,
Patent and Design Examination Department, Japan Patent Office

Upon receipt of your request, the JPO will reply to an informed e-mail address with a request form attached to it. The applicant is required to complete the form and return it to the JPO.

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 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 CSP to notification of eligibility to an applicant is described below.


[Fig. 1] From request for CSP to notification of eligibility to an applicant

It is free to file a request for the CSP with IP Offices.

<Things to be kept in mind before filing a CSP Request>
○The numbers of applications which can be filed with (and accepted by) the two IP Offices, either as an Office of First Search or Office of Second Search, are currently capped at 200 respectively. Once the two IP Offices have reached their capacities, they will stop accepting requests. The cumulative total of requests accepted by the two IP Offices are posted on the USPTO’s website accordingly.

5. Workflow Processes 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;

(JPO as the Office of First Search)


[Fig. 2] Workflow process under the US-JP CSP (JPO as the Office of First Search)

 

(JPO as the Office of Second Search)


[Fig. 3] Workflow process under the US-JP CSP (JPO as the Office of Second Search)

6. Other things to be kept in mind

○As a general rule, the two IP Offices shall notify the applicant the initial examination results within six months after the filing date of a request for the CSP, however, in case where the USPTO is unable to send a draft of pre-interview communication (PIC) to the JPO for some reasons eight months later from the filing date, an officer of Administrative Affairs Division of the JPO shall send a notice to the applicant to inform him/her that “Eight months have already passed since the JPO has received your request for the CSP, however, we have not received the examination results from the USPTO as of today. Therefore, the JPO is sending the Notification of Reasons for Refusal to you based on the examination results provided by the JPO alone.”

○In order to improve the JP-US 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.

Procedure to file a request to JPO for US-JP Collaborative Search Pilot Program (PDF:500KB)

FAQs (PDF:92KB)

7. Press release

●Japanese Page

[Last updated 10 August 2016]

Contact Us

Examination Policy Planning Office

Administrative Affairs Division

Patent and Design Examination Department

Japan Patent Office

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

E-mail : PA2260@jpo.go.jp