By Christopher P. Singer --
In a memorandum dated
December 10, 2008, the USPTO announced that, in response to comments from its customers, it has modified the requirements
for requesting participation in the patent prosecution highway (PPH) pilot
program. The changes will take
effect on December 22, 2008, and will allow certain U.S. applications based on
PCT filings to participate in the program. We reported the prior announcement detailing the more
restrictive original requirements for participation in the PPH pilot program
between the USPTO and the EPO here.
Under the new requirements, a U.S. application may be eligible to participate in the PPH program if it falls within any of the three following categories:
(a) a Paris Convention application which either (i) validly claims priority under 35 U.S.C. § 119(a) and 37 C.F.R. § 1.55 to one or more applications filed in the EPO; or (ii) validly claims priority under 35 U.S.C. § 119(a) or § 365(a) to a PCT application that contains no priority claims.
(b) a national stage application under the PCT (an application which entered the national stage in the U.S. from a PCT international application after compliance with 35 U.S.C. § 371), which PCT application (i) validly claims priority under 35 U.S.C. § 365(b) to an application filed in the EPO; (ii) validly claims priority under 35 U.S.C. § 365(b) to a PCT application that contains no priority claims; or (iii) contains no priority claim.
(c) a so-called bypass application filed under 35 U.S.C. § 111(a) which validly claims benefit under 35 U.S.C. § 120 to a PCT application, which PCT application (i) validly claims priority under 35 U.S.C. § 365(b) to an application filed in the EPO; (ii) validly claims priority under 35 U.S.C. § 365(b) to a PCT application that contains no priority claims; or (iii) contains no priority claim.
The Notice provides
some graphical depictions of applications which fall under these categories, which
may be helpful in determining whether an application you are handling is
eligible under these new requirements. 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.
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