By Christopher P. Singer --
In a memorandum dated October 20, 2008, the U.S. Patent and Trademark Office announced that it will expand the patent prosecution highway (PPH) pilot program to include the Danish Patent and Trademark Office (DKPTO). The PPH program becomes effective on November 3, 2008 for a term of one year, and is extendable for another year. The DKPTO becomes the seventh patent office to become a participant with the USPTO in a PPH program (along with Europe, Japan, Canada, Australia, Korea and the U.K.). As with the other PPH programs, the PPH pilot program between the US and DK Patent Offices allows applicants to request accelerated examination in one Office (the "Office of second filing" (OSF)), based on claims that were determined patentable in the other Office (the "Office of first filing" (OFF)). On November 3rd, the DK Patent Office will publish the procedures and requirements for filing a request to participate in the PPH (available here).
The memorandum lists several requirements for U.S. applications to enter the PPH pilot program, including:
(1) The U.. application is:
(a) 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 DKPTO; or validly claims priority under 35 U.S.C. §§ 119(a)/365(a) to a PCT application that contains no priority claims; or
(b) a national stage U.S. application under the PCT, where the PCT application validly claims priority to a DK application; or validly claims priority to a PCT application that contains no priority claims; or contains no priority claims; or
(c) a "bypass" application filed under 35 U.S.C. § 111(a) that validly claims benefit under 35 U.S.C. § 120 to a PCT application that validly claims priority to a DK application; or validly claims priority to a PCT application that contains no priority claims; or contains no priority claims.
(2) The DK application(s) have at least one claim that was determined by the DKPTO to be allowable and Applicant must submit a copy of the allowable claims from the DK application(s), along with an English translation thereof and a statement that the English translation is accurate.
(3) All the claims in the U.S. application must sufficiently correspond or be amended to sufficiently correspond to the allowable claims in the DK 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/20DK available from the USPTO website on November 3, 2008).
(6) Applicant must submit a copy of all the Office actions relevant to patentability from each of the DK application(s) containing the allowable claims that are the basis for the request, along with English translations thereof, and a statement that the translations are accurate.
(7) Applicant must submit an information disclosure statement (IDS) listing the documents cited by the DK examiner in the DK 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, by phone 571-272-8800 or e-mail: [email protected].
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