USPTO/JPO "New Route" Expedited Work Sharing Pilot Project

Under the "New Route" pilot project instituted on January 28, 2007 by the U.S. and Japanese Patent Offices, a filing in one office that is party to this arrangement would be deemed a filing in all member offices, and

While the New Route is in many respects similar to the Patent Cooperation Treaty
(PCT) (a 30-month processing period, a single filing treated as a filing in several countries, a search report available to “designated” offices, etc.), it may further offer significant advantages to applicants; in particular, lower costs and more targeted filings.

. . . By allowing the second office to exploit the search and examination results of the first office, the New Route would help offices reduce overall workload, minimize duplication of search efforts, and increase examination quality.

. . . .Once the request for participation in the New Route pilot project . . . has been granted to the U.S. national stage application filed under 35 U.S.C. 371, the U.S. national stage application will be taken up for examination by the U.S. examiner before all other categories of applications except those clearly in condition for allowance; those with set time limits, such as examiner’s answers; and those that have been granted special status for “accelerated examination.

In broad terms, the office of first filing (OFF) and applicant would be given a 30-month processing time frame in which to make available a first office action and any necessary translations to the second office(s), and the second office(s) would exploit the search and examination results in conducting their own examination. The first office would also be responsible for 18-month publication of the application. If the language of the first office is not English, an English language abstract and bibliographic data would be published together with the application.

The New Route pilot project will commence in both offices on January 28, 2008. The pilot project will be terminated once 50 applications have been accepted into the pilot project by each office as the OSF or the expiration of one year (January 28, 2009), whichever occurs first. Notice will be published if the pilot project will be terminated before January 28, 2009 (i.e., when 50 applications have been accepted into the pilot project by each office).


If the application qualifies for the New Route pilot project and the applicant wishes to participate in the pilot project, the applicant must submit a letter to the USPTO as the OFF notifying the USPTO that the applicant wishes to participate in the New Route pilot project. The letter must identify the U.S. and PCT application numbers and whether a first action on the merits for the U.S. application was/will be available no later than 26 months from the U.S. filing date for Case 1 above or from the filing date of the PCT application for Case 2 above. The USPTO will notify applicant whether his/her application has been selected. A list of the selected applications will be periodically sent to the JPO.

As illustrated above, where the USPTO is the OFF and JPO as the OSF, a PCT application that satisfies all of the following requirements (1), (2), (3), and (4) qualifies for the New Route pilot project.

1. The PCT application (with a priority claim to a U.S. application filed under 35 U.S.C. 111(a)) is filed with the USPTO (See Case 1) or the PCT application has been filed directly (without a priority claim) with the USPTO (See Case 2).


2. The PCT application has not entered the national phase in the JPO.


3. A first action on the merits by the USPTO
   (i) for the U.S. application filed under 35 U.S.C. 111(a) is/will be completed within 26 months from the filing date of that U.S. application (from which the PCT application claims priority) (See Case 1), or
   (ii) for the U.S. national stage application submitted under 35 U.S.C. 371 is/will be completed within 26 months from the filing date of the PCT application (filed directly with the USPTO) (See Case 2).
   
4. The PCT application does not have multiple priority claims (i.e., a maximum of one priority claim is permitted).

Further details here.