IP5 Unveils New Pilot Program for Collaborative Search and Examination

On July 1, 2018, the IP5 (Patent Offices for the US, the EU, Japan, Korea, and China) launched a new pilot program, PCT CS&E, testing collaborative search and examination for the PCT.  The Pilot Program is currently scheduled to take a total of three years. In years one and two the IP5 will be conducting the collaborative Pilot Program, while the third year will revolve around studying its effects. 100 applications from each International Search Authority will be accepted to the Pilot Program over the first two years, for a total of 500 files total. The goal of CS&E is to increase efficiency for the respective Patent Offices and applicants.

An application submitted to the CS&E Pilot Program is first reviewed by the PCT ISA to verify the fulfillment of required CS&E criteria and other application formalities before acceptance. The application is then sent to the first ISA (one of the IP5) for a provisional search and provisional opinion, which are sent to the “Peer” offices of the other IP5 who provide any additional comment and contribution to the search. After all four of the other offices have reviewed and contributed, the first ISA compiles the cumulative work, and produces a Final International Search Report and Written Opinion.

The total PCT CS&E process is expected to take a maximum of 16 weeks from receipt by the first ISA to the Final International Search Report and Written Opinion (eight weeks for initial search, four weeks for peer review, and four weeks for final drafting and incorporation of peer review). With the additional review from the other four IP5 offices, applicants who are planning to file in the IP5 may expect to have more expedited national phases.

There have previously been two pilot programs where the USPTO coordinated with other offices in order to determine the most effective operational system for inter-office collaboration. The goal of improving efficiency for applicants and patent offices will be reviewed in the third year of the Pilot Program. Participation in the PCT CS&E must be requested at the time of the filing and can be requested either online or using a provided PDF form. For more information on the Pilot Program, see the USPTO’s information page here.

Federal Circuit Rules on Patent Term Adjustment (PTA) in PCT Cases

In Actelion Pharms., Inc. v. Matal, the USPTO granted a Patent Term Adjustment (PTA) of 40 days for Actelion’s patent relating to pyridine derivatives.  The patent at issue was a national stage application filed under the Patent Cooperation Treaty.  Actelion contended that it should have been entitled to either 41 days from the 30-month deadline for filing or 45 days from the application’s actual filing date.

When filing the application, Actelion did not mark the check box on the USPTO form to expressly request early commencement of the national stage examination.  However, Actelion did submit a statement in a Preliminary Amendment that “Applicant earnestly solicits early examination and allowance of these claims.”  The USPTO determined that this statement did not comply with 35 U.S.C. § 371(f), which requires an express request for early commencement.  The Federal Circuit affirmed the USPTO determination, indicating that it is possible to request early commencement without using the optional USPTO form, but that Actelion’s statement failed to expressly request early commencement, particularly since it failed to even referenced § 371(f).

In the alternative, Actelion argued that even if the PTA was calculated from the 30-month deadline, it should have resulted in 41 days rather than 40 days.  The 30-month deadline happened to fall on a federal holiday and therefore examination did not commence until the following day.  Actelion argued that the federal holiday should have been included in the PTA calculation from the 30-month deadline, which would have resulted in 41 days rather than 40 days.  The Federal Circuit agreed with the USPTO calculation of 40 days because PCT regulations prohibited national stage commencement on a federal holiday.  Therefore, the additional day was not “undue delay” caused by the PTO, which would warrant PTA.

The USPTO determination of 40 days was affirmed.  Based on this ruling, it is advisable to ensure that § 371(f) is expressly invoked or the appropriate box is checked when requesting to commence national stage examination at an earlier date.