USPTO Expands Patent Prosecution Highway

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Donald Zuhn]

PPH LogoSince implementing its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) in 2006, the U.S. Patent and Trademark Office has established close to forty PPH programs with more than twenty other patent offices.  Earlier this month, the USPTO increased the number of PPH programs (full or pilot) to 35 with the announcement that the Office was establishing a 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 two new pilot programs, both of which went into effect on October 1, raise the number of offices with which the USPTO has PPH programs to twenty-four.  The USPTO also announced that additional PPH programs with the Philippines and Portugal would be implemented in January.

IPOCZAs with other PPH programs, the USPTO-IPOCZ 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 IPOCZ 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-IPOCZ PPH pilot program is scheduled to expire on September 30, 2013, but may be extended if necessary to adequately assess the feasibility of the program.  The USPTO's notice regarding the USPTO-IPOCZ PPH pilot program, including requirements for participation in the program, can be found here.

The PCT-PPH pilot program with the IPOCZ will apply to qualifying patent applications filed under the Patent Cooperation Treaty (PCT).  Under the USPTO-IPOCZ PCT-PPH, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the USPTO or IPOCZ 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-IPOCZ PCT-PPH pilot program is scheduled to expire on September 30, 2013, but may be extended if necessary to adequately assess the feasibility of the program.  The USPTO's notice regarding the USPTO-IPOCZ PCT-PPH pilot program, including requirements for participation in the program, can be found here.

Last week, the USPTO also announced that the Office and seven other patent offices had agreed to indefinitely extend an enhanced PPH pilot program known as MOTTAINAI.  The enhanced PPH pilot program, which was first implemented in 2011, derives its name from the Japanese term meaning "a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized."  Under MOTTAINAI, eight patent offices -- the USPTO, Canadian Intellectual Property Office (CIPO), Japan Patent Office (JPO), IP Australia (IPAU), National Board of Patents and Registration of Finland (NBPR), Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent), Spanish Patent and Trademark Office (SPTO), and United Kingdom Intellectual Property Office (UKIPO) -- have implemented enhanced PPH programs in which the requirements for participation have been modified to make the programs easier to use and more widely available to a greater number of applicants.  In particular, participation in MOTTAINAI can be requested on the basis of results available on any patent family member from any office participating in the pilot, regardless of whether it was the office where the priority application was filed.  In addition, the enhanced program utilizes a new definition of claim correspondence, which is intended to make the system more flexible and user-friendly without compromising efficiency or quality.

NIPOIn addition, the USPTO announced the continuation of a current PPH pilot program with the Norwegian Industrial Property Office (NIPO).  The USPTO-NIPO PPH program has been extended indefinitely.

With the addition of the above programs, the USPTO has twenty-two 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 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 thirteen PCT-PPH programs with other patent offices:  IP AU, APO, 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.


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McDonnell Boehnen Hulbert & Berghoff LLP

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