WIPO Launches Coordinated Examination before Top Five Patent Offices

By Kevin E. Noonan --

The World Intellectual Property Organization (WIPO) launched a pilot program on July 1st termed Collaborative Search and Examination (CS&E) that will enable an applicant to have searching performed by all five of the major global patent offices (the USPTO, European Patent Office (EPO), Chinese Patent Office (SIPO), Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO)).

According to WIPO, the program has the following features:  it is "applicant driven," insofar as applicants must request searching under the pilot program.  It envisions a "balanced workload distribution," wherein each office will perform a search as a "main ISA" for 100 applications and perform "peer ISA" searches for another 400 applications for the two years of the pilot program.  Finally, each ISA will use a "common set of quality and operational standards" in performing the searches.  Initially, all applications accepted into the pilot program must be filed in the English language (although WIPO anticipates that it may accept applications in other languages later in the program).

The program is depicted schematically on the WIPO website as follows:

The request for participation in the pilot program should be included with the application as filed, using this form.  Anticipating future acceptance of applications in other languages, WIPO has made available versions of this form in the Chinese, French, and German languages.

Comments

[SHAKLAIN KHURSHID]

Am thankful to the PCT system. This will promote very smooth prosecution of the National Phase Applications which in turn will reduce time and prevent any backlogs.

Thanks once again.

Best regards
Shaklain Khurshid

[Skeptical]

500 apps searched total (per country) - is that even close to a meaningful number?

[Kevin E Noonan]

It's a test, skeptical - and I think the idea is to see if it's viable for the patent offices and whether applicants want it.

[Skeptical]

Thanks Dr. Noonan.

While I realize that it is a test, my comment goes more to the infinitesimal number OF that test.

How many applications are filed per year (per participating Sovereign) - in toto? EVEN IF some result is obtained, the disparity related to any sense of "scale-up" would make the current test meaningless.

[En-trance]

It is encouraging to see this pilot as this type of collaboration may improve the comprehensiveness of the written opinions regarding novelty and inventiveness. Nevertheless, since none of the opinions are legally-binding, hopefully the offices involved will ensure that some type of oversight is being incorporated to ensure that these opinions are consistent with subsequent prosecution of the applications.