USPTO Expands and Extends Patent Prosecution Highway Programs - September 17, 2013

by McDonnell Boehnen Hulbert & Berghoff LLP
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USPTO Implements PPH 2.0 Programs with NRIP and DKPTO

PPH LogoOn September 12, the U.S. Patent and Trademark Office announced the implementation of a Patent Prosecution Highway (PPH) 2.0 program with the Nicaraguan Registry of Intellectual Property (NRIP).  On May 1, the USPTO also announced the implementation of a PPH 2.0 program with the Danish Patent and Trademark Office (DKPTO).  The implementation of the PPH 2.0 programs with the NRIP, which commenced on September 5, 2013 and will run indefinitely, and the DKPTO, which commenced on June 3, 2013 and will run indefinitely, brings the number of PPH 2.0 participating offices to fifteen, including the USPTO, Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), European Patent Office (EPO), German Patent and Trade Mark Office (DPMA), Japan Patent Office (JPO), Intellectual Property Office of the Philippines (IPOPHL), IP Australia (IPAU), Korean Intellectual Property Office (KIPO), National Board of Patents and Registration of Finland (NBPR), Portugal National Institute of Industrial Property (INPI-PT), Federal Service on Intellectual Property, Patents & Trademarks of Russia (ROSPATENT), Spanish Patent and Trademark Office (SPTO), and United Kingdom Intellectual Property Office (UKIPO).

In order to participate in any of the PPH 2.0 programs in the USPTO, applicants must satisfy the following requirements:

1.  One of the other PPH 2.0 participating offices has determined that at least one claim is allowable/patentable (under the PPH 2.0 program, applicants no longer need to submit a copy of the allowed claim or any English translation thereof).

2.  The application before the PPH 2.0 participating office (i.e., containing the allowable/patentable claim) and the U.S. application for which participation in the PPH 2.0 program is being requested must have the same priority/filing date.

3.  All claims on file, as originally filed, or as amended in the U.S. application must sufficiently correspond to one or more of the claims indicated as allowable in the application filed in the PPH 2.0 participating office (the USPTO notice states that "[a] claim is considered to 'sufficiently correspond' where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office").  Under the PPH 2.0 program, applicants must submit a claims correspondence table (in English), indicating how all the claims in the U.S. application correspond to the allowable/patentable claims in the application filed in the PPH 2.0 participating office.

4.  Examination of the U.S. application for which participation in the PPH 2.0 program is being requested has not yet begun.

5.  The applicant has filed a request to participate in the PPH 2.0 program.

6.  The applicant must submit a copy of the office action issued just prior to the "Decision to Grant a Patent" (along with an English translation, which may be a machine translation) for the application before the PPH 2.0 participating office (under the PPH 2.0 program, applicants no longer need to submit a statement that the English translation is accurate).

7.  The applicant must submit an information disclosure statement listing all documents cited in the office action of the PPH 2.0 participating office.

8.  All of the documents described above must be filed via the EFS-Web and indexed using the document description:  "Petition to make special under Patent Pros Hwy."

Additional information regarding the PPH 2.0 program with NRIP can be found here.

USPTO Continues PPH Programs with IPOCZ, ILPO, and PRV

IPOCZOn September 11, the U.S. Patent and Trademark Office announced the continuation of a patent prosecution highway (PPH) pilot program and a PPH pilot program based on Patent Cooperation Treaty (PCT) work products (PCT-PPH) with the Industrial Property Office of the Czech Republic (IPOCZ).  The USPTO-IPOCZ PPH permits an applicant having an application whose claims have been allowed in the IPOCZ to fast track the examination of an application in the USPTO, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from the IPOCZ that at least one claim in an application is patentable may request that the USPTO fast track the examination of corresponding claims in the corresponding application in that office.  Under the PCT-PPH pilot program, an applicant receiving a written opinion or international preliminary examination report in a PCT application that indicates at least one claim in the PCT application has novelty, inventive step, and industrial applicability, where the USPTO was the International Searching Authority or the International Preliminary Examining Authority, may request that the IPOCZ fast track the examination of corresponding claims in an application filed with the IPOCZ.  Both pilot programs have been extended indefinitely.

ILPOOn August 1, the USPTO announced the continuation of a PCT-PPH pilot program with the Israel Patent Office (ILPO).  On June 1, the USPTO also announced the continuation of a PCT-PPH pilot program with the Swedish Patent and Registration Office (PRV).  Both PCT-PPH pilot programs have been extended indefinitely.

PRVThe USPTO currently has twenty-five PPH programs (full or pilot) in place with IP Australia (IP AU), the Austrian Patent Office (APO), the Canadian Intellectual Property Office (CIPO), China's State Intellectual Property Office (SIPO), the Colombian Superintendence of Industry and Commerce (SIC), the Industrial Property Office of the Czech Republic (IPOCZ), the Danish Patent and Trademark Office (DKPTO), the European Patent Office (EPO), the National Board of Patents and Registration of Finland (NBPR), the German Patent and Trade Mark Office (DPMA), the Hungarian Intellectual Property Office (HIPO), the Icelandic Patent Office (IPO), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Mexican Institute of Industrial Property (IMPI), the Nicaraguan Registry of Intellectual Property (NRIP), the Norwegian Industrial Property Office (NIPO), the Intellectual Property Office of the Philippines (IPOPHL), the Portugal National Institute of Industrial Property (INPI-PT), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Intellectual Property Office of Singapore (IPOS), the Spanish Patent and Trademark Office (SPTO), the Taiwan Intellectual Property Office (TIPO), and the United Kingdom Intellectual Property Office (UK IPO).  The USPTO has also established thirteen PCT-PPH programs with other patent offices:  IP AU, APO, CIPO, SIPO, IPOCZ, EPO, NBPR, ILPO, JPO, KIPO, the Nordic Patent Institute (NPI), ROSPATENT, SPTO, and the Swedish Patent and Registration Office (PRV).  Additional information regarding the various PPH and PCT-PPH programs, as well as links to the appropriate request forms to be used for each program, can be found here.

USPTO Implements PCT-PPH with CIPO

CIPOOn May 17, the U.S. Patent and Trademark Office announced that it was establishing a PCT-PPH pilot program with the Canadian Intellectual Property Office (CIPO).  Under the new pilot program, which went into effect on January 31, an applicant receiving a written opinion or international preliminary examination report in a PCT application that indicates at least one claim in the PCT application has novelty, inventive step, and industrial applicability, where the USPTO or CIPO was the International Searching Authority or the International Preliminary Examining Authority, may request that the other office fast track the examination of corresponding claims in an application filed with that office.  The USPTO- CIPO PCT-PPH pilot program is scheduled to expire on January 30, 2015, but may be extended if necessary to adequately assess the feasibility of the program.

USPTO Establishes Permanent PCT-PPH Program with NBPR

NBPR (Finland) SealEarlier this year, the U.S. Patent and Trademark Office announced that it was establishing a permanent PCT-PPH program with the National Board of Patents and Registration of Finland (NBPR), effective as of January 24, 2013.  In making the announcement, the USPTO noted that "[t]he results of the PCT-PPH pilot program showed that applicants have been able to expeditiously obtain a patent at an early stage by utilizing petition to make special procedures, based on claims in a corresponding PCT application that were found to have novelty, inventive step, and industrial applicability by either the USPTO or the NBPR acting as the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA)," adding that "[t]he results of the PCT-PPH pilot program further show that the USPTO and the NBPR have been able to reduce duplication of search efforts by exploiting the search and examination results in PCT applications to the maximum extent practicable."

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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