USPTO News: Patent Prosecution Highway Expands to Europe

    By Christopher P. Singer --

In a memorandum dated September 22, 2008, the U.S. Patent and Trademark Office announced that it and the European Patent Office (EPO) have agreed to enter a pilot Patent Prosecution Highway (PPH) program, effective September 29, 2008, for a term of one year.  The addition of the EPO program makes a total of six active PPH programs (either permanent or pilot) in which the USPTO participates (including programs with Japanese, Canadian, Australian, Korean, and U.K. patent offices).  The exception in the European PPH program is that International (PCT) applications are excluded from participation.  Additional requirements for participation in the PPH program can be found at the EPO website (www.epo.org) or the USPTO website (www.uspto.gov), or in the USPTO Notice.

Briefly, the Notice lists several requirements for applications to be eligible to participate in the PPH pilot program, including:

(1)  The U.S. application is a Paris Convention application validly claiming priority under 35 U.S.C. § 119(a) and 37 C.F.R. § 1.55 to one or more applications filed in the EPO.

(2)  The EPO application(s) have at least one claim that was determined by the EPO to be allowable and Applicant must submit a copy of the allowable claims from the EPO application(s).

(3)  All the claims must sufficiently correspond or be amended to sufficiently correspond to the allowable claims in the EPO application(s).

(4)  Examination of the U.S. application for which participation in the PPH pilot program is requested has not begun.

(5)  Applicant must file a request for participation in the PPH pilot program and a petition to make the U.S. application special under the PPH pilot program (sample form PTO/SB/20EP to be made available from the USPTO website on September 29, 2008).

(6)  Applicant must submit a copy of all the Office actions relevant to patentability from each of the EPO application(s) containing the allowable claims that are the basis for the request.

(7)  Applicant must submit an Information Disclosure Statement (IDS) listing the documents cited by the EPO examiner in the EPO Office action, unless an IDS citing those references has already been filed in the U.S. application.

Questions concerning the Notice or the PPH program can be directed to Magdalen Greenlief, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-8800 or at magdalen.greenlief@uspto.gov.

Comments

[Patent Paralegal]

Has anyone seen the EPO's memorandum on this process?

I did not find thier collateral procedures on the EPO web site. And I don't want to ask OC for fear of being change 9M euros.

[Chris Singer]

Patent Paralegal - I found some information from the EPO's website at this link: http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20080926.html. They may have additional information somewhere...but look for forms on the date the PPH program begins.

[Day Karlo]

Sir:

Would a PCT application be excluded if the USPTO was chosen as the searching authority, rather than the EPO?

Cordially,
Day Karlo

[Chris Singer]

Dear Day: From the language of the Notice, I would say that a PCT application is not eligible for participation regardless of the ISA. In brief (the following is taken from the Notice):

"PCT international applications (including national stage applications filed under 35 U.S.C. 371), provisional applications, plant and design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH."

Eligible U.S. applications include (paraphrased from the Notice): U.S. applications that are Paris Convention applications validly claiming priority under 35 U.S.C. 119(a) and 37 CFR 1.55 to one or more applications filed in the EPO.

So, this program appears to be relevant to a smaller pool of applications than one may intially expect.

Thanks for your question, and thanks for reading.

Chris