PCT collaborative search and examination (CS&E) pilot project run by the IP5 offices
On 1 July 2018, the IP5 Offices (EPO, KIPO, USPTO, JPO and SIPO) launched a pilot project to test a collaborative approach to international searches under the PCT, particularly with a view to assessing user interest for such a new PCT product and also look at the expected efficiency gains for the participating offices.
In short, a PCT application filed in English can be entered in the pilot, with the EPO as ISA for example. If it is accepted by the EPO, the EPO will conduct its normal search and examination of the application. Before sending their report the EPO will send the application and its provisional search and examination to colleagues in each of the other four offices, who will review the report and comment on it and possibly update the search using their own resources.
The combined search and examination report finally issued by the EPO will be in its control but may be more in-depth and useful because of the input from the other offices. Applicants could expect that those other offices would not raise further issues during the national phase before those offices, as they have had a chance already to review and comment on the application.
Currently applicants may participate in the scheme with no additional cost, but there may be some delay before the search and examination report is issued. If the scheme is successful and implemented as a regular product under the PCT, applicants will have to pay a specific CS&E fee. The maximum prospective amount of the CS&E fee will be the aggregate amount of the search fees of the participating ISA plus an administrative fee to cover the costs of collaboration. This seems to imply that the involvement of the other offices could be significant, which may result in a more thorough examination of the application. The pilot will run for 2 years, and during that time, each applicant will only be able to select a limited number of international applications (10 being the maximum per ISA).
The scheme is open to new PCT applications filed after 1 July 2018. If you think your application would benefit from participation in the scheme, then please contact your usual HGF attorney.