Have you used the IP5 Collaborative Search and Examination (CS&E) pilot?

The IP5 offices are conducting a pilot of combined search and examination during the international phase. Participation in the pilot is available on request to eligible PCT applicants. As a pilot programme, the combined search and examination does not incur additional costs to the applicant. The USPTO, EPO and JPO have re-opened or are just about to re-open for applications to the pilot. So far, the EPO reports an “overwhelmingly positive response” from applicants. As the expected second-wave of applications to the pilot begins, IPKat is eager to hear readers views and experiences of the system.

Background - The IP5 and International search and examination

The five largest IP offices, EPO, JPO, USPTO, KIPO and CNIPA (formerly SIPO) are collectively known as the IP5 offices. The IP5 offices handle about 80% of the world’s patent applications and 95% of the work carried out by the PCT (see IP5 2017 statistics here). One focus of the IP5 offices is avoidance of unnecessary duplication of work relating to PCT applications. Activities of the group include the Global Dossier of patent information, harmonisation of classification practice and “work sharing and quality”, including projects such as the IP5 Patent Prosecution Highway.

Pilot

Under the current PCT system, a PCT application is searched by the competent international search authority (ISA) (Article 16 PCT). The ISA produces an international search report (ISR) and written opinion on the patentability of the application (Article 15 PCT). The ISR is not a binding opinion but gives an indication of the prior art that an applicant will encounter in the national/regional phases.

The identity of the competent ISA is partly dictated by the identity of the Receiving Office (RO) at which the PCT application was filed. When the USPTO is acting as the RO, for example, an applicant may choose the USPTO, EPO, KIPO or even Russian Patent Office (Rospatent) as the ISA. Every ISA will perform a global search for prior art. However, it is undoubtedly the case that the USPTO is more likely to cite US originating documents, whilst the JPO is more likely to cite Japanese documents. The WIPO attributes these biases to the respective language proficiencies of the examiners.

It is therefore still possible that an applicant for an international application may encounter new prior art, not cited in the ISR, during the national or regional phase. To reduce the risk of this, it is possible for a PCT applicant to request a supplementary international search (SIS) from another ISA. The SIS is performed in addition to the international search by the main ISA (Rule 45bis.1). The request for a SIS is filed at the International Bureau, and may designate any competent ISA  (providing the requisite translations are provided) (Annex SISA). The downside of an SIS is that it requires payment of an additional search fee.

In an effort to improve efficiency and early certainty for applicants, the USPTO, KIPO and EPO completed a first small-scale Collaborative Search and Examination (CS&E) pilot in 2010 (see WIPO report PCT/WG/4/15 here). The IP5 launched a second Collaborative Search and Examination (CS&E) pilot in 2018. The pilot aims to test a collaborative approach to international search by the IP5 examiners. 

Collaborative Search and Examination (CS&E) pilot

For applications accepted to the CS&E pilot, an ISA examiner of an IP5 office carries out an international search and prepares a provisional opinion and search report. The application is then passed to “peer” examiners in the other 4 IP5 offices. The peer examiners produce their own contribution to the search and pass these back to the ISA examiner. The ISA examiner then produces the finalised ISR and written opinion. The peer examiners' contributions are published as separate documents to the ISR and written opinion.

Given that extra work is required, CS&E processing is expected to take longer than the standard international search. The process is expected to take about 16 weeks (8 weeks for initial search, 4 weeks for peer review and 4 weeks for production of the final report). The USPTO provides a summary of the expected timeline for applications accepted to the pilot.

The benefit of participating in the pilot for an applicant is that their application will be searched by multiple examiners with different language capabilities. This reduces the risk of prior art being cited for the first time during national or regional phase. The purported benefits thus include predictability of the outcome of national and regional phase.

Participating in the pilot does not incur additional costs. Applicants are only required to pay the standard fee for international search at the main ISA. If CS&E makes the transition from pilot to practice, a specific CS&E fee will be introduced. This is expected to take the form of a “collaboration fee” on top of the normal search fees for the main ISA.

How does an applicant request participation in the pilot?

Applying for CS&E is simple. Perspective applicants are merely required to submit a request form as part of their PCT application at one of the IP5 offices or the international bureau (IB) of the WIPO. To be accepted on the pilot, an application must not be found to possess a defect that would disrupt the CS&E 16 week timeline (e.g. no sequence listing in text format). Acceptance on to the pilot is decided by the IB.

At first (up until December 2018), the pilot only accepted international applications filed in English. A main IP5 ISA may now also accept applications to the pilot in an language (to be decided by each ISA individually). The pilot is limited to 500 international applications and to 10 applications per applicant per IP5 office.

Details of the applications that will be accepted to the CS&E pilot for each of the IP5 offices can be found on the WIPO CS&E pilot resource page. The EPO is currently accepting French and German applications to the pilot, and will begin accepting English applications from 1 July 2019.  The JPO began accepting applications in Japanese with English translations from the 1 April 2019. New applications will be accepted by the USPTO from the 1 July 2019.

Progress of the CS&E pilot so far

The operational phase of the pilot is due to run until 1 June 2012. The number of applicants accepted to the pilot per IP5 office can be seen here. There is a roughly even spread of 40-50 applications per IP5 office. The EPO appears to consider the pilot successful so far, having found an “overwhelmingly positive response” from applicants.

It is unknown whether a positive ISR under the CS&E pilot will allow an application to be fast-tracked through prosecution in the national/regional phase for all of the IP5 offices. There may perhaps be a difference in opinion as the relevance of the cited prior art amongst the main and peer examiners. Is this why the reports from the peer examiners are published as well as the main ISR from the main ISA? If CS&E is extended beyond the pilot, participation will undoubtedly be highly dependent on the amount of the CS&E fee, and the perceived benefits of additional searching. None-the-less, the aim of harmonizing international search across the IP5 is broadly welcome. 

Do readers have any experience of the latest CS&E pilot, positive or negative?

Image credits: Margarita Zhitnik