By Donald Zuhn --
USPTO and ROSPATENT Begin Patent Prosecution Highway Pilot Program
On Monday, the U.S. Patent and Trademark Office announced that it had agreed to partner with the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (ROSPATENT) in establishing a Patent Prosecution Highway (PPH) pilot program. As with other PPH programs, the USPTO-ROSPATENT PPH will permit an applicant having an application whose claims have been allowed in one of the offices to fast track the examination of an application in the other office, such that the latter application is examined out of turn. In particular, an applicant receiving a ruling from either ROSPATENT or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in the corresponding application in that office.
The USPTO-ROSPATENT PPH pilot program will begin on September 1, 2010, and continue for one year. USPTO requirements for participation in the USPTO-ROSPATENT PPH pilot program can be found here, and ROSPATENT requirements for participation in the program can be found here. A form for making a PPH request in the USPTO will be available on September 1 on the USPTO-ROSPATENT PPH webpage.
USPTO Director David Kappos noted that "[a]s the USPTO and other patent offices throughout the world face challenges of increased patent filings and growing backlogs, it is important that we work together to find ways to streamline processing and avoid redundancy." According to Director Kappos, PPH programs are "an important step toward the goal of maximizing reutilization of work done by other offices." ROSPATENT Director General Dr. Boris Simonov said that the PPH would help decrease the backlogs of unexamined patent applications in both offices as well as establish international standards of carrying out patent search and examination.
USPTO-NBPR PPH Continued
On July 1, the USPTO announced that the PPH pilot program between the USPTO and the National Board of Patents and Registration of Finland (NBPR), which began on July 6, 2009 (see "USPTO Initiates Patent Prosecution Highway Pilot Program with Finland Patent Office"), was being extended past the original July 6, 2010 deadline. The USPTO notice indicated that the offices had agreed to continue the program in order to collect more information before making any formal decision regarding the program.
USPTO and HPO Launch PPH Pilot Program
On June 30, the USPTO announced that it had agreed to establish a PPH pilot program with the Hungarian Patent Office (HPO). The USPTO-HPO PPH was the eleventh such program established by the USPTO over the past four years (with the USPTO-ROSPATENT PPH becoming the twelfth). 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), HPO, and ROSPATENT.
The USPTO-HPO PPH pilot program began on July 1, 2010. The program will continue for a period of one year, at which time the pilot may be extended for one additional year in order to adequately assess the program's feasibility. The USPTO and HPO will evaluate the results of the pilot program to determine whether and how the program should be fully implemented after the trial period. USPTO requirements for participation in the USPTO-HPO PPH pilot program can be found here. In addition, the 12-page notice provides thirteen examples (with figures) of applications that would satisfy the requirements.
USPTO Eliminates PPH Fee to Make Special
In May, the USPTO published a notice in the Federal Register (75 Fed. Reg. 29312) announcing the elimination of the fee for the petition to make special under the PPH programs. Prior to May 25, an applicant wishing to enter one of the PPH programs was required to pay the petition fee under 37 C.F.R. § 1.17(h). According to the notice, "[t]he elimination of the petition fee . . . is expected to encourage greater PPH participation."
The notice indicates that "PPH applications have proven, on average, to take significantly less time to prosecute than non-PPH applications." Stating that "[t]he PPH has proven to be a useful work-sharing vehicle," the notice presents some statistics in support of this assessment, noting that more than 2,500 PPH requests had been received as of February 2010, that the first action allowance rate (25%) and overall allowance rate (93%) for PPH applications is about double that of non-PPH applications, and that the average number of actions per disposal (1.7) for PPH applications is "significantly less" than that for non-PPH applications.
The continued global expansion of the PPH is welcome news. Any measure that promises to increase efficiency in the patent application process, reduce the backlog, and improve international cooperation is a positive development.
http://www.aminn.org/webcast-aipr-patent-reform-presentation-us-patent-and-trademark-office
Posted by: patent litigation | August 31, 2010 at 03:43 PM