USPTO Expands and Extends Patent Prosecution Highway

By Donald Zuhn --

Last month, the U.S. Patent and Trademark Office announced that Patent Prosecution Highway (PPH) pilot programs had been established with the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), and the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT).  The PPH pilot program with ROSPATENT, which began on September 1, had initially been announced by the USPTO in August (see "USPTO Continues to Expand Patent Prosecution Highway").  In announcing the new pilot programs, the Office reiterated that the programs allow the participating Offices to benefit from work previously done by other Offices, in turn reducing examination workload and improving patent quality.

As with other PPH programs, the three new PPH pilots will permit an applicant having an application whose claims have been allowed in the SPTO, APO, or ROSPATENT 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 one of the USPTO's PPH partners) that at least one claim in an application is patentable may request that the SPTO, APO, or ROSPATENT (or USPTO) fast track the examination of corresponding claims in the corresponding application in that office.  In last week's announcement, the USPTO also noted that the Office would be initiating a PCT-PPH pilot program with SPTO, APO, and ROSPATENT.  In the PCT-PPH programs, the Offices will use international written opinions and international preliminary examination reports developed under the international Patent Cooperation Treaty (PCT) to expand the availability of reusable work in the PPH program.  The new PPH pilot programs with the SPTO and APO began on October 1, 2010 and will continue for one year.

Requirements for participation in each of the PPH programs at the USPTO can be found here.  In addition, notices providing details regarding the new PPH programs with the SPTO and APO can be found here (SPTO) and here (APO), and notices providing details regarding the new PCT-PPH programs can be found here (SPTO), here (APO), and here (ROSPATENT).

With the addition of the SPTO, APO, and ROSPATENT, the USPTO has now established PPH programs with thirteen 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), and the Austrian Patent Office (APO).

  In other PPH news, the USPTO and EPO announced that the two Offices have agreed to extend their PPH pilot program until January 28, 2012.  The USPTO-EPO PPH was originally set to expire on September 29, 2009, and had been previously extended once before to September 30, 2010.

The USPTO also announced over the summer that it was establishing a PCT-PPH with the KIPO.  The two Offices already had a full PPH program in place.  A notice providing details regarding the new PCT-PPH can be found here.

Comments

[patent litigation]

I support and encourage the continued expansion of the PPH pilot programs, as I believe that they will go far to improve efficiency and international relations. But in entering into all of these PPH programs, the U.S. should take care to ensure that other countries that have allowed claims have IP systems in place that are comparable to the quality of ours.
http://www.fastcompany.com/1693197/why-apple-could-pay-more-than-625m-for-cover-flow-patent-infringement

[patent litigation]

I support and encourage the continued expansion of the PPH pilot programs, as I believe that they will go far to improve efficiency and international relations. But in entering into all of these PPH programs, the U.S. should take care to ensure that other countries that have allowed claims have IP systems in place that are comparable to the quality of ours.
http://www.fastcompany.com/1693197/why-apple-could-pay-more-than-625m-for-cover-flow-patent-infringement