By Donald Zuhn --
The U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) have announced that the two Offices will begin a new work-sharing pilot program on January 28, 2008. The pilot program, which the Offices are calling the "New Route," will allow each Office to benefit from examinations and searches performed in the other Office. In particular, the Office in which an application is first filed will provide translations, search results, and examinations to the Office in which the application is subsequently filed.
According to the USPTO, the New Route program will allow the Offices to "reduce overall workload, minimize duplication of search efforts, and increase examination quality." While acknowledging that the New Route program is similar to the Patent Cooperation Treaty (PCT), the Offices contend that the program will offer applicants lower costs and more targeted filings.
The foundation for the New Route pilot program was laid last fall during the 25th Annual Trilateral Conference (see Patent Docs report), where the USPTO and JPO agreed on the pilot program's parameters. Because a permanent version of the New Route program, as envisioned by the two Offices, would require changes to U.S. and Japan patent law, the Offices will be testing the New Route concept using two filing scenarios that are currently available under each country's patent law. These scenarios include:
1. A priority application is filed in Office #1. A PCT application claiming the benefit of the priority application is filed in Office #1. The PCT application enters national stage in Office #2 and the search and examination results of the priority application are available within 26 months from the filing date of the priority application.
2. A PCT application having no benefit claims is filed in Office #1. The PCT application enters national stage in Office #1 earlier than it enters national stage in Office #2, the latter occurring at the 30th month. The search and examination results of the national stage in Office #1 are available within 26 months from the international filing date.
Applicants interested in participating in the New Route pilot program must file a request with the first Office (and then subsequently with the second Office). Because a request filed with the USPTO (when it is the first Office) will not guarantee that search and examination results will be available within the 26-month period described above, the USPTO is encouraging applicants to utilize the provisions of 37 C.F.R. § 1.102 (Advancement of examination) and M.P.E.P. § 708.02(a) (Accelerated Examination). The USPTO will notify U.S. applicants as to whether their applications have been selected for the pilot program, and during the course of the pilot program, will periodically send a list of candidate applications to the JPO. The New Route pilot program will run until January 28, 2009 or until each Office selects 50 candidate applications.
The USPTO notice provides specific guidelines for entering the New Route pilot program. Where the USPTO is the first Office in which the application is filed (i.e., the USPTO is Office #1), the following criteria must be met:
1. The PCT application must be filed with a single priority claim to a nonprovisional application (scenario #1 above) or without a priority claim (scenario #2 above).
2. The PCT application has not yet entered national phase in the JPO.
3. A first action on the merits must be issued by the USPTO on the nonprovisional application within 26 months of its filing date (scenario #1 above) or on a U.S. national stage application within 26 months of the international filing date (scenario #2).
Applicants interested in participating in the New Route program and having applications meeting the above criteria must fax a letter to the Office of the Commissioner for Patents, directed to the attention of Magdalen Greenlief (571-273-0125), notifying the USPTO that the applicant wishes to participate in the New Route pilot program, identifying the U.S. and PCT application numbers, and informing the Office whether a first action on the merits will be issued within 26 months of the nonprovisional or international filing date.
Where the USPTO is the second Office in which the application is filed (i.e., the USPTO is Office #2), the following criteria must be met:
1. The U.S. application is a national stage application of a PCT application filed with the JPO Receiving Office.
2. The PCT application must be filed with a single priority claim to a Japanese patent application (scenario #1 above) or without a priority claim (scenario #2 above).
3. Search and examination results must be issued by the JPO on the Japanese patent application within 26 months of its filing date (scenario #1 above) or on a Japanese national stage application within 26 months of the international filing date (scenario #2).
Upon entry into national stage in the U.S., applicants interested in participating in the New Route program and having applications meeting the above criteria must fax the following documents to the Office of the Commissioner for Patents, directed to the attention of Magdalen Greenlief (571-273-0125):
(i) request for participation in the New Route pilot program,
(ii) petition to make the U.S. national stage application special under 37 C.F.R. § 1.102(d),
(iii) copy of the first office action by the JPO and an English translation thereof,
(iv) copy of the claims searched and examined by the JPO and an English translation thereof,
(v) statement that the translations are accurate, and
(vi) information disclosure statement listing any documents cited in the JPO office action together with copies of all cited documents except U.S. patents or U.S. patent application publications.
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