Going global with a product idea just got easier thanks to a new bilateral collaboration search pilot program between the United States Patent and Trademark Office and the Japan Patent Office.
The program began August 1, 2015, and will continue for two years, with an option to extend it. Patent applicants may participate in the partnership program if:
- They agree to the sharing of information in their patent application.
- The patent is for a single invention.
- The patent application contains no more than three independent claims, no multiple dependent claims, and 20 total claims.
- Your application has not been examined in either office.
- Your petition to participate is granted by both offices. During the pilot program, each country is limited to accepting 200 petitions.
The purpose of the program is to share patent search information so applicants receive the most relevant prior art search possible. In doing so, patent applicants will be issued better quality patents in both countries in a faster and more efficient manner.
Additional benefits of the collaboration search pilot program include:
- Enhanced consistency between both offices, resulting in a greater certainty of intellectual property rights.
- A more compact patent prosecution.
- Expedited search results and final disposition.
- No fee to use the program.
Under the current system, an applicant who files a patent application in the United States with a foreign priority claim has to submit an information disclosure statement to the U.S. patent office. This document is usually submitted after the patent examination is underway, so the examiner must take additional time to examine the art cited by the foreign office before making a final determination on patentability. This delay leads to additional costs, both on the part of the applicant and the United States Patent and Trademark Office.
Under the new collaborative program, the combined patent search will be conducted before the patent application examination begins to avoid those additional costs. The search results will be exchanged with the other office before either patent office issues a patentability statement to the applicant. This prevents one office from completing the examination before the other completes the prior art search.
Both the U.S. and Japan search results will be listed in a report, allowing applicants to better determine their next step in the patent prosecution process.
According to officials with the United States Patent and Trademark Office, the program will enhance patent prosecution and improve patent quality. The patent application will be accelerated in both country’s patent offices, resulting in faster prosecution.
A similar work sharing pilot program is in the works between the United States and Korea, with an expected implementation date of September 1, 2015.
The United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) are among the five largest intellectual property offices in the world. The other two are the European Patent Office (EPO) and the State Intellectual Property Office of the People’s Republic of China (SIPO). The United States hopes to form similar collaboration search programs with these two groups as well.
