USPTO Expands and Extends Patent Prosecution Highway Programs

by McDonnell Boehnen Hulbert & Berghoff LLP
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[author: Donald Zuhn]

PPH LogoSince implementing its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) on July 3, 2006, the U.S. Patent and Trademark Office had established some thirty PPH programs with more than twenty other patent offices.  The USPTO recently increased the number of PPH programs (full or pilot) to thirty-three by establishing a PPH pilot program based on Patent Cooperation Treaty (PCT) work products (PCT-PPH) with the Israel Patent Office (ILPO), and the number of offices with which it has PPH programs to twenty-three by establishing a PPH pilot program with the Colombian Superintendence of Industry and Commerce (SIC).  In addition, the USPTO continued two other PPH programs -- PCT-PPH pilot programs with IP Australia and the Nordic Patent Institute (NPI) -- and fully implemented two other PPH programs -- a PPH program with ILPO and a PCT-PPH program with the Korean Intellectual Property Office (KIPO).

Last week, the USPTO announced the establishment of a new Patent Prosecution Highway (PPH) pilot program with the Colombian Superintendence of Industry and Commerce (SIC).  As with other PPH programs, the USPTO-SIC PPH will permit an applicant having an application whose claims have been allowed in one of the offices to fast track the examination of an application in the other office, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from either the USPTO or SIC that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in the corresponding application in that office.  The USPTO-SIC PPH pilot program, which will begin on September 1, 2012, is scheduled to expire on August 31, 2013, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.  The USPTO's notice regarding the USPTO-SIC PPH pilot program, including requirements for participation in the program, can be found here.

Earlier this month, the USPTO announced that it would be launching a new Patent Prosecution Highway (PPH) pilot program with the Israel Patent Office (ILPO) on August 1, 2012.  The pilot program will apply to qualifying patent applications filed under the Patent Cooperation Treaty (PCT).  Under the USPTO-ILPO PCT-PPH, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the USPTO or ILPO was the International Searching Authority or the International Preliminary Examination Authority may request that the other office fast track the examination of corresponding claims in corresponding applications.  The USPTO-ILPO PPH pilot program is scheduled to expire on July 31, 2013, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.  The USPTO's notice regarding the USPTO-ILPO PCT-PPH pilot program, including requirements for participation in the program, can be found here.  While announcing the new PCT-PPH pilot program with the ILPO, the USPTO also announced that it was fully implementing the PPH program with the ILPO, effective July 1, 2012.  The USPTO's notice regarding the USPTO-ILPO PPH program, including requirements for participation in the program, can be found here.

The USPTO also announced earlier this month the continuation of a current PPH pilot program with the ILPO (see notice) and a PPH pilot program based on Patent Cooperation Treaty (PCT) work products (PCT-PPH) with the NPI (see notice).  Both PPH programs have been extended indefinitely.

Finally, the USPTO announced in late June that the USPTO and KIPO had agreed to fully implement their PCT-PPH program on a permanent basis starting on June 1, 2012.  The USPTO noted that "[t]he results of the [USPTO-KIPO] 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," and that "the USPTO and the KIPO have been able to reduce duplication of search efforts by exploiting the search and examination results in PCT applications to the maximum extent practicable."  The USPTO's notice regarding the USPTO-KIPO PCT-PPH program, including requirements for participation in the program, can be found here.

With the addition of the above programs, the USPTO has twenty-one 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 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 Norwegian Industrial Property Office (NIPO), 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 twelve PCT-PPH programs with other patent offices:  IP AU, APO, SIPO, 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.

 

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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