Imagine you are counsel representing a patent owner in an infringement case. Suppose you can say to the judge and jury:
Ladies and gentlemen, you have heard my learned opponent invite you to consider whether perhaps this patent should never have been granted because of prior art that was overlooked. But you might be interested to know that during the time that this patent application was pending, prior art searching was carried out by not one, not two, not three, not four, but five patent offices. The Examiners in these five patent offices were fluent in the Chinese, English, French, German, Japanese and Korean languages. Before the claims were found to be patentable, these Examiners shared with each other the prior art that they found. The Examiners from these five patent offices shared their thoughts as to whether the claims were patentable in view of the prior art that was found. Only after all of these things took place did the patent office decide to grant a patent. And this is the patent before you now.
I’d call such a patent a Super Patent. Yes under US law any patent is to be presumed valid, but I suggest such a patent would enjoy a much greater presumption of validity. Would you like to learn how to get such a Super Patent?
The way to get such a Super Patent is by somehow getting your PCT application into the PCT Collaborative Search and Examination Pilot Project or “CS&E Pilot”. You do this by filing a PCT application in one of the eligible Receiving Offices (CN, EP, IB, JP, KR, US) and by picking one of the participating ISAs (CN, EP, JP, KR, and US), and by including a form with the PCT application requesting participation in CS&E. And by being so fortunate as to have your application allocated to one of the several hundred available slots.
As a matter of terminology, the particular ISA that you pick will be termed “the main ISA” and the other four ISAs will be termed the “peer ISAs”.
During this pilot project, the cost to participate is zero. Yes, it sounds too good to be true, but it is zero. You need only pay the same fees that you would have paid ordinarily. The search fee, for example, will simply be the search fee that you would normally pay for the ISA that you select.
What’s the catch? There isn’t a catch.
Well, there are several small catches.
First, the CS&E pilot will run for at most two years. Maybe later there will be an ongoing (maybe even permanent) CS&E program, but for now there will only be this pilot program.
Second, during those two years, no single applicant will be permitted to get more than ten applications into the CS&E pilot.
Third, each of the five ISAs plans to accept at most one hundred PCT applications into the CS&E pilot. From this it follows that each ISA will find itself participating as a peer ISA only four hundred times. Saying this differently, the total number of PCT applications accepted into this pilot will be at most about five hundred.
The number of granted patents from this program in any particular patent office might turn out to be several hundred. Considering that some cases might turn out not to be patentable, and considering that divisionals might get filed, I can imagine the number of granted patents from the CS&E pilot might be in the range of 300 to 600.
If you’d like to try to get one of these several hundred Super Patents, you will need to act fast.
To learn more about the CS&E pilot, click on the WIPO web page about CS&E or on any of the following links:
Carl, we know that currently the USPTO does NOT give full faith and credit to PCT searches conducted under its own auspices, perhaps because those searches are actually outsourced. We also know that the EPO relies on PCT searches its examiners conduct, going so far as to waive the search fee upon regional phase entry. Do you or does anyone else know if the giving of credit, vel non, by the five participating offices will change (for better or worse) as a result of participation in this expanded search? For example, if I pick KIPO as my search authority, but get input from the EPO through this program, will I be able to avoid the search fee upon EPO regional phase entry, or get a reduced search fee in the US national phase application since there was input from the “USPTO”?
Also, I laughed at this statement in the form for requesting participation in the program: “The collaborative process involves additional administrative steps which may reduce the ISA’s ability to establish the international search report within the time limit indicated in PCT Rule 42.” My translation: “don’t blame us at WIPO if [unnamed country] gums up the works so that you get your ISR late”. Although I would expect that there will be pressure, both internally and from the other four offices, for each office to complete its work in these cases in a timely manner, so I would expect whatever delays there are to be minimized.
Thank you for posting your comment.
My prediction is that if you were to pick EPO in this program, and if the ISA were to be favorable, then you could enter the regional phase in EPO and it would be given full faith and credit as always.
It is an interesting question whether EPO’s participation as a “peer ISA” would lead to a similar full faith and credit situation in the event of an entry into the EP regional phase. I do not know the answer.
And yes, there is no choice but to consider that some peer ISA might gum things up. From this I guess the main practice tip is to file one’s PCT application for CS&E much much earlier then 12 months. Frankly I would file the PCT first or file it within just a month or two of the priority date.
Hi Carl,
From what we saw in a previous test, the results were unbalanced. One office would do most of the collaborative work, while another office would do almost as little as possible. If this is not fixed, it may simply be a way of getting the “less hard-working” office to receive “free” help from the other office. The results will always be very good, the question is who pays them. I wrote “free” within commas, because the applicants of the other office are paying for this effort by way of their patent fees.