With the recent demise of the First Full First Action Interview (FAI) Pilot Program as of January 15, 2021, many are seeking new ways to speed up examination without the expensive government fee of a Track One filing ($4,200/$21,00) or the legal jeopardy and cost of a pre-examination search and characterization of an Accelerated Examination. The United States Patent and Trademark Office (USPTO) has recently put together a presentation that outlines the requirements and benefits of the Expanded CSP program, which no longer requires use of the FAI. Currently, the partner intellectual property (IP) offices include the USPTO, the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO).
The first phase of the CSP program between Japan and the United States was held from August 1, 2015 to July 31, 2017, and between Korea and the United States was held from September 1, 2015 to August 31, 2017. The second phase for all was held from November 1, 2017 to October 31st, 2020 as an Expanded CSP program with some changes to the first phase of the CSP program. New expanded CSP Program has started for all on November 1, 2020 as the third phase.
As set forth in Summary of the Federal Register Notice published on February 4, 2021:
Each designated partner IP office independently conducts a prior art search for its corresponding counterpart application. The search results are then exchanged between the designated partner IP office(s), including the USPTO, before any IP office issues an office action. With this exchange of search results, the examiners in all designated partner IP offices will have a more comprehensive set of prior art references to consider when making initial patentability determinations. The Expanded CSP allows the USPTO to study the impact on examination processes of exchanges of search results between the USPTO and multiple partner IP offices prior to formulating and issuing office action.
CSP Eligibility Requirements:
- Must be for national utility applications
- Examination in either IP office must not have begun
- Applications must share a common earliest priority date (post AiA of March 1,6, 2013) and must support the claimed subject matter
- No-cost petition filed in the USPTO; no-cost request or petition in partner IP offices
- Applications must have corresponding independent claims
- Consent to sharing information between IP offices
- Corresponding claims must be listed on petition form and be translated into the language of the IP office
- No more than three independent and 20 total claims permitted
- No multiple dependent claims in U.S. application
- Only 400 request per year can be granted in each partner IP office.
- Set to expire on October 31, 2022
So why would an applicant want to subject their patent application to coordinated attacks on multiple fronts?
- Dramatically shorten pendency. As noted in the USPTO presentation, from petition grant to a First Action on the Merits (FAOM) is typically less than four months versus a typical timeframe of 1.5-2 years.
- Streamlined examination process across the partner IP offices
- Consistency and certainty regarding IP rights granted
- Reducing burden of IDS from Applicants. (Applicants do not need to submit documents which the JPO or the KIPO cite in its first Office Action)
- Chance to have a group prosecution. (If applicant applies for the CSP program with an option of a group of technically related applications together to the JPO (up to 5 applications), the applicant can obtain the examination results for the group of applications from the JPO at same time. Also, the applicant may be able to obtain the examination results for the group of applications at almost same time from the USPTO, since both examiners in the JPO and the USPTO conduct the first examination and send the result at almost same time.)
Especially for companies domiciled in Japan or Korea or US companies that know they need to file in Japan or Korea, this could be a useful tool for speeding up and streamlining prosecution. And filing the petition is free.