By Donald Zuhn --
USPTO and IMPI Establish Patent Prosecution Highway (PPH) Pilot Program
On Friday, the U.S. Patent and Trademark Office announced that it was establishing a new Patent Prosecution Highway (PPH) pilot program with the Mexican Institute of Industrial Property (IMPI). As with other PPH programs, the new PPH pilot will permit an applicant having an application whose claims have been allowed in the IMPI to fast track the examination of an application in 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 the IMPI) that at least one claim in an application is patentable may request that the IMPI (or USPTO) fast track the examination of corresponding claims in the corresponding application in that office.
The USPTO-IMPI PPH pilot program will begin on March 1, 2011, and is set to expire on February 29, 2012 (although the pilot program may be extended for up to one year or terminated earlier depending on volume of activity and other factors). Requirements for participation in the new PPH pilot program at the USPTO can be found here, and details regarding the new PPH program with the IMPI can be found here.
With the addition of the IMPI, the USPTO has now established PPH programs with fifteen 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 Patent Office (HPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), and the Mexican Institute of Industrial Property (IMPI).
USPTO and IP Australia Extend PPH Pilot Program
Earlier this month, the USPTO and announced that it would be extending its PPH pilot program with IP Australia. The two offices agreed to extend the program to April 13, 2012. The USPTO-IP Australia PPH was originally established on April 14, 2008 (see "Patent Prosecution Highway Extended to IP Australia"), and had been previously extended once before on April 10, 2009 (see "USPTO Extends Patent Prosecution Highway Pilot Program with IP Australia").
USPTO Provides Additional Information about PCT-PPH Programs with IP Australia and NBPR
Last month, the USPTO and IP Australia (IPAU) announced that the two offices had agreed to enter into a new PPH pilot agreement utilizing Patent Cooperation Treaty results (PCT-PPH) (see "USPTO News Briefs"). Under the PCT-PPH framework, which began on January 24, 2011, faster examination is available for an application receiving positive PCT international search reports with written opinions or international preliminary examination reports. The new PCT-PPH program is scheduled to continue until April 13, 2012. On February 15, the USPTO published additional information regarding the PCT-PPH between the two offices in a notice in the Official Gazette.
The USPTO also published additional information regarding its expanded PCT-PPH program with the National Board of Patents and Registration of Finland (NBPR) in a February 15 notice in the Official Gazette. The expanded PCT-PPH program with the NBPR was also announced last month (see "USPTO News Briefs").
USPTO and CIPO Agree to Full Implementation of PPH
Earlier this month, the USPTO published a notice in the Official Gazette announcing that the Office had reached an agreement with the Canadian Intellectual Property Office (CIPO) to fully implement the PPH program between the two offices on a permanent basis beginning on January 29, 2011. The USPTO and CIPO initiated a PPH pilot program on January 28, 2008 (see "USPTO Announces Two Additional Partners in the Patent Prosecution Highway Pilot Program"), and had extended the pilot once before (see "Patent Prosecution Highway Pilot with CIPO Is Extended").
In the OG notice, the USPTO indicated that the PPH program with CIPO was being fully implemented because "[t]he results of the pilot program showed that (1) applicants have been able to expeditiously obtain a patent in the Office of second filing (OSF) at an early stage, by utilizing the petition to make special procedures currently available in the OSF, based on claims that have been allowed in the Office of first filing (OFF); (2) the OSF has been able to reduce duplication of search efforts by exploiting the search and examination results of the OFF to a maximum extent practicable; and (3) the OSF has been able to reduce the examination workload since the scope of the claims in the OSF application has been clarified through the OFF’s examination prosecution." Additional information regarding the USPTO-CIPO PPH can be found in the OG notice.