The U.S. Patent and Trademark Office (USPTO) has created Patent Prosecution Highway (PPH) programs with the Intellectual Property Office of Singapore (IPOS), the Japan Patent Office (JPO) and the European Patent Office (EPO). Under each PPH program, an applicant receiving a determination from either of three Offices that at least one claim in the foreign application is allowable/patentable may then request that a corresponding application filed in the USPTO be accorded special status and be advanced out of turn for examination.
The PPH program with the IPOS was created on
February 2, 2009 and was to last for a period of one year. However on February
23, 2010, the USPTO announced
that the PPH program with the IPOS would be extended to collect more information
before any formal decision on the program was made.
The PPH program with the JPO was implemented on January 4, 2008 and at the 2009 Trialteral Conference, the USPTO and JPO agreed to revise certain requirements within the program. The first revision allows applicants to submit an English machine translation of a copy of the latest JPO office action just prior to the "Decision to Grant a Patent" from each of the JPO applications containing the allowable/patentable claims that are the basis for the PPH request. Under the revision, only translations by the JPO and not a commercial service are allowed. An applicant is still required to submit an English translation of all claims accompanied by a statement that the English translation is accurate.
The second revision revises the definition of "sufficient correspondence." Under
the new definition, claims are considered to sufficiently correspond when the
claims in the U.S. application are the same or similar in scope to the Japanese
application or the claims in the U.S. application are narrower in scope than the
allowed Japanese claims. The new
definition is implemented on a two-year trial period basis. Thus, the new revision allows an
applicant to submit claims under the PPH program that are written in dependent
form which are narrower in scope than the Japanese application.
At the 2009 Trilateral Conference, the USPTO, the EPO (see 1351 OG 208) and the JPO (see 1351 OG 209) also agreed to launch a new Patent Prosecution Highway based on Patent Cooperation Treaty (PCT) work products (PCT-PPH). As described in the Official Gazette, the PPH-PCT can be used by applicants who received:
1. A Written Opinion from an International Searching Authority, or
2. A Written Opinion from an International Preliminary Examining Authority, or
3. A International Preliminary Examination Report from an International Preliminary Examining Authority,
that indicates at least one claim in the PCT application has novelty, inventive step, and industrial applicability.
The Official Gazette further describes that to be eligible to participate in the PPH-PCT program the following conditions must be met:
1. The relationship between the corresponding U.S. application for which participation in the PCT-PPH pilot program is requested and the PCT application satisfies one of the following:
a. The U.S. application is a national stage entry of the corresponding PCT application.
b. The U.S. application is a national application which forms the basis for the priority claim in the corresponding PCT application. Provisional applications, plant applications, design applications, reissue applications and applications subject to a secrecy order (35 U.S.C. § 181) are excluded and not subject to participation in the PCT-PPH program.
c. The U.S. application is a national stage entry of another PCT application (which can be filed in any competent receiving office) which claims priority to the corresponding PCT application.
d. The U.S. application is a national application claiming foreign/domestic priority to the corresponding PCT application. Design applications and applications subject to a secrecy order (35 U.S.C. § 181) are excluded and not subject to participation in the PCT-PPH program.
e. The U.S. application is a continuing application (continuation, divisional, or continuation-in-part) of the U.S. application which satisfies one of the above (a) to (d) scenarios. Plant applications, design applications and applications subject to a secrecy order (35 U.S.C. § 181) are excluded and not subject to participation in the PCT-PPH program.2. The latest work product in the international phase of the PCT application corresponding to the U.S. application indicates at least one claim in the PCT application has novelty, inventive step and industrial applicability.
3. Claim Correspondence
4. Substantive examination of the U.S. application for which participation in the PCT-PPH pilot program is requested has not begun.
5. Applicant must file a request for participation in the PCT-PPH pilot program and a petition to make the U.S. application special under the PCT-PPH pilot program.
6. Applicant must submit a copy of the latest international work product with an English translation.
7. Applicant must submit a copy of the claims from the corresponding PCT application which were indicated as having novelty, inventive step and industrial applicability in the latest work product of the PCT application along with an English translation thereof and a statement that the English translation is accurate.
8. A claims correspondence table in English must be submitted.
9. Applicant must submit an information disclosure statement (IDS) listing the documents cited in the international work products and copies of all the documents.
10. The Request must be submitted to the USPTO via EFS-Web.
The PCT-PPH pilot
program with both the JPO and the EPO became effective on January 29, 2010, and
will remain effective until January 28, 2012.
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