USPTO News Briefs - June 21, 2012

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Donald Zuhn]

USPTO Extends After Final Consideration Pilot Program

USPTO SealIn March, the U.S. Patent and Trademark Office implemented an After Final Consideration Pilot (AFCP) program, which provided examiners with a limited amount of non-production time -- three hours for utility, plant, and reissue applications and one hour for design applications -- to consider responses filed following a final rejection (see "USPTO to Assess After Final Consideration Pilot Program").  On Wednesday, the Office announced that it had extended the AFCP program, which was scheduled to end on June 16, 2012, to September 30, 2012.  According to the Office's announcement regarding the extension, the AFCP program has resulted in an increase in allowance rates for applications after final rejection.  More information regarding the AFCP program can be found here.

USPTO Publishes Notice on Full Implementation of PPH with HIPO

HPOIn April, the U.S. Patent and Trademark Office announced that the USPTO and the Hungarian Intellectual Property Office (HIPO) had signed a Memorandum of Understanding making the Patent Prosecution Highway (PPH) program between the two offices permanent (see "USPTO News Briefs").  The USPTO has now published a pre-OG notice regarding the full implementation of this PPH program as of June 4, 2012.  The notice outlines the requirements for participating in the program and provides a number of examples of U.S. applications that satisfy those requirements.

The PPH program between the USPTO and HIPO permits an applicant having an application whose claims have been allowed by HIPO to fast track the examination of an application before the USPTO, or vice versa, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from the USPTO (or HIPO) that at least one claim in an application is patentable may request that HIPO (or the USPTO) fast track the examination of corresponding claims in the corresponding application in that office.  The USPTO also announced that the two offices set forth in the Memorandum of Understanding a common desire to implement further developments of the PPH program.

Since 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 has established a total of twenty PPH programs with other patent offices.  Currently the USPTO has PPH programs (full or pilot) in place with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), IP Australia (IP AU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the Intellectual Property Office of Singapore (IPOS), the German Patent and Trade Mark Office (DPMA), the National Board of Patents and Registration of Finland (NBPR), the Hungarian Intellectual Property Office (HIPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), the Mexican Institute of Industrial Property (IMPI), and the Israel Patent Office (ILPO), the Taiwan Intellectual Property Office (TIPO), the Norwegian Industrial Property Office (NIPO), China's State Intellectual Property Office (SIPO), and the Icelandic Patent Office (IPO).  The USPTO has also established eleven PCT-PPH programs with other patent offices:  IP Australia, APO, SIPO, EPO, NBPR, 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 can be found here.

USPTO and UKIPO Issue Report on Work Sharing Initiative

UKIPOEarlier this year, the U.S. Patent and Trademark Office and United Kingdom Intellectual Property Office (UKIPO) issued a "Preliminary Progress Report for USPTO-UKIPO Work Sharing Initiative."  The 8-page report provides preliminary results from a survey of USPTO and UKIPO examiners who had referred to a search or examination work product generated by the counterpart office.  The report notes that:

The preliminary results suggest that further cooperation should be undertaken to explore the differences in practice between the Offices, particularly regarding novelty and inventive step/non-obviousness.  Collaboration on these issues could facilitate a deeper understanding among examiners and help to close gaps, in turn leading to more effective reutilization of work products.

While the report recommends that the offices continue their work sharing program, it also suggests that the offices "focus on increasing examiner understanding of each Office's practice."  The report concludes by noting that "observations by examiners at both Offices reveal that the practices and/or patent laws of the counterpart Offices are not always fully understood" -- particularly with respect to novelty and obviousness/inventive step -- and therefore that "the potential benefits of work sharing may not be fully exploited until there is a better understanding regarding the applicability of prior art."


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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