July 04, 2018

IP5 launched a new pilot project

Over the course of more than 10 years, the five largest intellectual property offices of the world (the IP5), namely the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of China (SIPO) and the United States Patent and Trademark Office (USPTO), have been working together to harmonise patent prosecution especially examination efficacy worldwide. In addition to other activities, the IP5 initiated a new Collaborative Search and Examination (CS&E) pilot project taking effect on July 1, 2018.

The main objective of the CS&E is to provide a more profound search for PCT applications based on the collaboration of the participating offices, resulting in a high-quality international search report (ISR) and written opinion. The initial term for the pilot project is two years. During this period each IP office will process up to 100 PCT applications as a main international searching authority (ISA) and about 400 PCT applications as a peer of the ISA.

To make use of the collaborative international search, the applicant must file a corresponding request with the selected main ISA along with payment of the established international search fee. Utilising the CS&E, each applicant may choose up to 10 applications to be processed by the same main ISA. The application should be filed in English or, in case of another language, the English translation has to be provided within one month from the date of acceptance of the application to the pilot.

The establishment of the ISR may extend beyond the timeframes prescribed by the Patent Cooperation Treaty due to a more complicated procedure. However, the CS&E initiative is expected to become more beneficial for applicants, since the largest IP authorities will process one international application. Ultimately this should result in a deeper, more attentive and accurate search assured by the harmonised procedures and qualified examiners from the IP5 Offices.

Author: Jessica Chester