USPTO Delegate Green Technology to JPO under PCT

USPTO Delegate Green Technology to JPO under PCT

By Dr. Rao Vepachedu, JD, PhD, LLM1

The Patent Cooperation Treaty (PCT) is an international agreement that simplifies the filing of patent applications in its contracting States. A PCT application has the effect of a national application for a patent in any of the designated PCT States. International applicants receive an International Search Report and an International Preliminary Report on Patentability to help them determine if an application meets basic patentability criteria before committing to the high cost of translating and entering the national stage in one or more PCT countries.

For consistency in examination across Offices leading to more certainty of IP rights, the United States Patent and Trademark Office (USPTO) is conducting a Collaborative Search Pilot Program (CSP)2 with two pilots, one with the Japan Patent Office (JPO) and another with the Korean Intellectual Property Office (KIPO). The purpose of CSP is to provide our stakeholders with search results from two Offices early in the examination process so applicants can determine their next steps in patent prosecution.

JPO Pilot begins August 1, 2015, when the USPTO and JPO will exchange search and evaluation results indentifying the best prior art and provide a work product that incorporates the efforts of the two Offices3, limited to 200 applications per year.

KIPO Pilot begins September 1, 2015, when The KIPO pilot and the USPTO will conduct two independent searches and provide both work products to the applicant for consideration. To better understand the workflow process.

Application requirements are based on First Action Interview (FAI) Program, wherein claims are limited to 3 Independent and total 20 claims, directed to a single invention, having post-AIA earliest priority date.   Petitions must be granted in both First Office and Second Office prior to acceptance into CSP. Petitions will be accepted starting on August 1, 2015 for the JPO-USPTO pilot and on September 1, 2015 for the KIPO-USPTO pilot.

Green Technology Delegation Program4: In yet another program, the USPTO and JPO have implemented an agreement under which JPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain international applications in field of green technology filed with the USPTO as the Receiving Office (RO/US), under PCT. The agreement took effect on July 1, 2015. The agreement is intended to end on June 30, 2018, but may be continued by mutual written consent.

Under this agreement, eligible international applications in field of green technology that are (1) submitted in the English language; and (2) in the field of green technology as defined by certain International Patent Classification classes; provided (3) the JPO has not received more than 5,000 international applications from the USPTO during the three year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years; and (4) the JPO is chosen as a competent authority by the applicants of said applications.


Notes and References:

(1)  Dr. Rao Vepachedu is a Managing Director at Cardinal Risk Management and registered patent attorney with extensive experience in the management of intellectual property and extensive experience in research and teaching. He currently works for Cardinal Intellectual Property (CIP), Cardinal Risk Management (CRM), and Cardinal Law Group (CLG). In addition, he is the president of Vepachedu Educational Foundation, an educational 501(c) (3) corporation. For more information visit: www.linkedin.com/in/vepachedu; http://www.avvo.com/attorneys/60201-il-sreenivasarao-vepachedu-764535.html, and http://www.crm-ip.com/vepachedu.html.  Contact: svepachedu@yahoo.com or rao.vepachedu@cardinal-ip.com.

(2)  Collaborative Search Pilot Program (CSP): http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp

(3)  JPO Process Flow: http://www.uspto.gov/sites/default/files/documents/JPOUSPTO%20Pilot.pdf

(4)  Patent Cooperation Treaty Agreement: http://www.uspto.gov/about-us/news-updates/uspto-and-jpo-announce-patent-cooperation-treaty-agreement

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