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Federal Register / Vol. 86, No. 22 / Thursday, February 4, 2021 / Notices
and cited prior art, the U.S. examiner may determine that the prior art cited by the foreign office is relevant to patentability and merits being used in further examination before making a final determination on patentability of the pending claims. This delay caused by further examination results in additional costs to applicants and the USPTO that could have been avoided if the U.S. examiner was in possession of the foreign offices search results before commencing examination of the U.S.
application. Furthermore, in light of the USPTOs various expedited examination programs, the possibility exists that a U.S. application may reach final disposition before the applicant is in receipt of a foreign offices search results. The exchange of search results between IP offices before an initial determination on patentability should increase efficiency and promote patent examination quality.
In order to study the benefits of the exchange of search results between multiple IP offices, current USPTO
examination practice is modified for applications in the Expanded CSP so that a search will be conducted and search results generated without issuance of an Office action. The U.S.
applications in the Expanded CSP are made special pursuant to USPTO
procedures to ensure that they are contemporaneously searched with their corresponding counterpart applications.
In the original version of the CSP, the USPTO required the use of the First Action Interview Pilot Program FAI, which separated the prior art search from the issuance of an Office action.
The USPTO determined that it is unnecessary to require applicants participating in the Expanded CSP to use FAI procedures. Instead, applications in the Expanded CSP are accorded special status before the first action on the merits FAOM, and prior art references provided through the exchange of search results will be included in the FAOM.
In the United States, the Expanded CSP requires a petition to make special for the participating application and authorization to exchange information with the designated partner IP offices prior to an initial determination of patentability. As this worksharing program is operating under a common framework across all agreements between the USPTO and the partner offices, it is permissible to participate in the Expanded CSP with multiple partner offices simultaneously, and the program is open to adding more partner IP offices once appropriate agreements are in place.

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II. Overview of the Expanded CSP
An application must meet all the requirements set forth in section III of this notice to be accepted into the Expanded CSP. Applicants must file a Petition to Make Special Under the Expanded Collaborative Search Pilot Program using Form PTO/SB/437 via EFS-web or Patent Center in a U.S.
application. Use of the form is mandatory and will assist applicants in complying with the pilot programs requirements, as well as aid the USPTO
in quickly identifying participating applications. Form PTO/SB/437 is available at www.uspto.gov/
CollaborativeSearch. The collection of information involved in this pilot program has been reviewed and previously approved by OMB under control number 06510079, and is available at OMBs Information Collection Review website, www.reginfo.gov/public/do/PRAMain.
The USPTO is not resubmitting the 06510079 information collection to OMB for its review and approval because this notice does not affect the information collection requirements associated with the information collection.
In addition to a petition being filed with the USPTO, a request must also be filed in the corresponding counterpart applications in each applicantdesignated partner IP office, in accordance with the requirements of that office. Partner IP offices may require a petition or a request; therefore, for purposes of this notice, usage of the term request refers to the initial submission that a partner IP office requires to initiate participation in the Expanded CSP. As each partner IP
offices conditions for entry may differ, applicants should review the requirements of the relevant partner IP
offices to ensure compliance.
No fee for a petition to make special under 37 CFR 1.102 is required for participation in the Expanded CSP.
New patent applications are normally taken up for examination in the order of their U.S. filing date. Applications accepted into the Expanded CSP receive expedited processing by being granted special status and taken out of turn until issuance of an FAOM, but they will not maintain special status thereafter.
Designated partner IP offices and the USPTO share search results before the issuance of an initial determination on patentability. Participants in the Expanded CSP should review the references cited in each respective offices initial determination on patentability. The references cited in the initial search by any partner IP office
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will become of record in the USPTO
application and will be listed on Form PTO892, and the examiner will consider the references, thereby reducing the burden on the applicant to file an Information Disclosure Statement IDS. If the references cited by any partner IP office are not already of record in the USPTO application and the applicant wants to ensure that the examiner considers the references, then the applicant should file an IDS that includes a copy of the initial determination on patentability, along with copies of any missing or newly cited references in accordance with 37
CFR 1.97, 37 CFR 1.98, and the Manual of Patent Examining Procedure MPEP
sec. 609.04ab. See also MPEP secs.
609 and 2001.06a.
Each office may reevaluate the workload and resources needed to administer the Expanded CSP at any time. The USPTO will provide notice of any substantive changes to the program including early termination of the program at least 30 days prior to the implementation of any changes.
III. Requirements for Participation in the Expanded CSP
The following requirements must be satisfied for a petition under the Expanded CSP to be granted:
1 The application must be a nonreissue, non-provisional utility application filed under 35 U.S.C. 111a, or an international application that has entered the national stage in compliance with 35 U.S.C. 371, where the effective filing date of any claimed invention is no earlier than March 16, 2013. For corresponding counterpart applications filed in accordance with the agreement between the USPTO and the KIPO only, plant applications filed under 35 U.S.C.
161 are also eligible. The U.S.
application and all corresponding counterpart applications must have a common earliest priority date that is no earlier than March 16, 2013. The disclosures of the U.S. application and all counterpart applications must support the claimed subject matter as of a common date. The U.S. application must be complete and eligible to receive a filing receipt at the time the petition is filed.
2 A completed petition, Form PTO/
SB/437, must be filed in the application via EFS-Web or Patent Center. Form PTO/SB/437 is available at www.uspto.gov/patents-getting-started/
international-protection/collaborativesearch-pilot-program-csp. Based on the agreements between the USPTO and the partner IP offices, a separate petition to make special must be filed in the U.S.
application for each partner IP office
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