IP Law Bulletin

Patent prosecution—everything that takes places after a patent application is filed until it issues—can be a complex and lengthy process. A majority of time and attention is usually spent on getting a patent application drafted and filed, and rightfully so, but clients often ask: “How long until we hear from the patent office?,” “How soon could this application be granted?,” and “What do we need to do next?” This article is Part 1 of an educational series intended to help answer those questions and provide a birds-eye view of the process for obtaining patent protection in the United States and worldwide.

The United States Patent and Trademark Office (USPTO) recently announced that the Expanded Collaborative Search Pilot (CSP) program, which was enacted in November 2017, has been extended to October 31, 2022. The Expanded CSP affords applicants the ability to get patent applications issued more quickly while enhancing the quality of the patent due to the more comprehensive nature of the patent search that results from the Expanded CSP. Under the Expanded CSP, patent applicants may request that multiple partner intellectual property (IP) offices (e.g., the Japanese or Korean IP offices) coordinate an exchange of prior art search results with each other prior to issuing an office action. The Expanded CSP built on the success of the Initial CSP, which facilitated sharing of search results of related counterpart applications between the USPTO and a single designated partner IP office (e.g., the Japanese or Korean IP office). The current partner IP offices are the JPO and KIPO, but the USPTO plans to announce future partner IP offices once they become designated.