The world´s five biggest IP offices (collectively named IP5) started on July 1, 2018 a Collaborative Search and Examination (CS&E) pilot project to allow applicants of PCT applications upon request to receive an early search report including a provisional written opinion on patentability drawn up jointly by examiners of the Chinese, US, Japanese, Korean and European patent offices. This allows applicants to get an early assessment of the chances of success of a patent application based on a broader perspective of different prior art databases, search strategies, languages, and examiner expertise.
The applicant-driven procedure (see official illustration) starts with a request filed by the applicant with the Receiving Office, which will be transmitted to the International Bureau (IB) and the competent International Searching Authority (ISA), which has to be one of the IP5 offices.
The competent ISA will then assesses whether the requirements (see below) are met and will notify the applicant and the IB whether or not it accepts the request for participation in the pilot. The competent ISA (now main ISA) then carries out a search, prepares a search report and a provisional opinion on patentability. These are made available to the “peer” examiners at the other four IP offices through a safe ePCT-based platform. The peer examiners will provide the main examiner with their contributions, taking into consideration the provisional international search report and written opinion of the main ISA. The final international search report and written opinion will be established by the main examiner after consideration of the contributions from the peer examiners, which is in turn submitted to the applicant or its representative, if possible, within the time limit under Rule 42.1 PCT, i.e. within nine months from the earliest priority date of the PCT application.
Each of the participating offices will admit about 100 PCT applications to the pilot throughout a two-year period starting on July 1, 2018 such that in total 500 PCT applications will be participating. A common set of quality and operational standards will be applied by all collaborating offices. The CS&E pilot project is scheduled to continue until June 1, 2021 and will then be jointly assessed by the participating offices.
During the pilot phase the cost of the jointly prepared search report and written opinion is that of a normal PCT chapter I search at the competent ISA. The applicant thus gets the additional search and examination results from the other four offices for free. If the CS&E will be implemented as a regular product, however, higher fees are to be expected.
The requirements for participating at the CS&E pilot project are the following:
- The request for participation in the pilot must be submitted using the standard form and filed together with the international application at the Receiving Office or the IB.
- Until languages other than English are accepted into the pilot, the participation form and the international application must be filed in English.
- One applicant cannot file more than 10 requests for participation in the pilot at a same main ISA.
If the pilot turns out to be successful, the collaborative work of peer examiners of the IP5 offices could bring a huge benefit for patent applicants. It may also allow a glimpse at a future international patent system harvesting international cooperation and standardization to avoid duplicated work and bringing faster, more cost-effective procedures for the applicants. Earlier knowledge about the patentability of an application also brings benefits to the industry as a whole and contributes to make the patenting process itself more transparent and efficient.