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South Korea: Collaborative Search Pilot Program between KIPO and USPTO




In the last few decades, the number of patent applications in the top five IP offices (IP5) has grown exponentially. Thus, the IP offices had to seek ways to increase efficiency, without undermining the quality of the examination. One remarkable trend in this regard is a work sharing among the IP offices. In order to minimise duplication of work over common patent applications, Korean Intellectual Property Office (KIPO), the USPTO and the Japan Patent Office (JPO), three member offices of IP5, have devised a new innovative model that is already put in force for a field test.

From September 1 2015 to August 31 2017, KIPO and the USPTO had run a bilateral Collaboration Search Pilot (CSP) programme. Briefly, the CSP provides applicants with search results from multiple offices early in the examination process. The most notable benefit of CSP is that it accelerates initial examination. Applicants receive an action from both offices within several months after a request for CSP is granted, which is well before filing applications claiming priority within 12 months under the Paris Convention in other jurisdictions.

First pilot programme (September 2015 to August 2017)

In order to utilise the CSP, corresponding applications should be filed with both KIPO and the USPTO. As the two offices conduct prior search separately and then share information of prior art with each other, the combined results of the two offices are sent to the applicants in each country. According to the USPTO, a total of 111 requests were filed during the two-year period of the first pilot programme with KIPO.

Like the Patent Prosecution Highway (PPH), CSP accelerates the examination process. The main difference between CSP and PPH is that, in order to use PPH, the applicant must receive an examination result from a first patent office, and that at least one claim must be allowable, because the applicant may request accelerated examination at a second patent office with claims indicated as allowable by a first patent office. In contrast, CSP is taking place before the issuance of a first office action by both offices.

The second pilot project between KIPO and the USPTO will begin on November 1 2017 and will run for three years until October 31 2020. The process was simplified by removing a few procedures, such as sending prior arts of both countries to applicants and Information Disclosure Statement (IDS) burden of the applicant in the US.

In addition to the simplification of the process, a few modifications were made to the requirements of the request. In the first pilot project, all of the corresponding claims between Korean and US applications were required to be identical, but in the second pilot project, the two applications should have the same independent claims and may have different dependent claims. Further, the applicants no longer need to be identical between the two applications, and applications do not need to meet the requirements for unity of an invention.

In order to request CSP under the new pilot programme, Korean and US applications must meet the following requirements:

i) The earliest priority date must be same in the two applications

ii) The earliest priority date must be on or after March 16 2013

iii) The examination request must be made before or at the same time of the CSP request

iv) The number of claims must be 20 or less, and among them, independent claims must be 3 or less

v) Corresponding independent claims between the two applications must be identical

vi) The CSP request must be based on a single U.S. application

vii) Claims citing more than 2 claims are excluded.

At the moment, it is enough to understand the CSP as another type of accelerated examination.Nevertheless, it is encouraging to see that the IP offices are working together to enhance examination efficiency and quality. This being so, the second Collaborative Search Pilot Program deserves our close attention and interest. Let us see how this new system will unfold.

Min Son

HANOL Intellectual Property & Law
6th Floor, Daemyung Tower, 135, Beobwon-ro, Songpa-gu
Seoul, 05836, Republic of Korea
Tel: +82 2 942 1100
Fax: +82 2 942 2600
hanol@hanollawip.com
www.hanollawip.com


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