By Donald Zuhn --
The U.S. Patent and Trademark Office recently announced the expansion or implementation of Patent Prosecution Highway (PPH) pilot programs with the Korean Intellectual Property Office (KIPO), Swedish Patent and Registration Office (PRV), Nordic Patent Institute (NPI), and Israel Patent Office (ILPO). With the addition of these new pilot programs, the USPTO has now established PPH programs with eighteen 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), the Austrian Patent Office (APO), the Mexican Institute of Industrial Property (IMPI), the Swedish Patent and Registration Office (PRV), the Nordic Patent Institute (NPI), and the Israel Patent Office (ILPO).
USPTO and KIPO Expand PCT-PPH Program
On June 20, the U.S. Patent and Trademark Office announced that it was expanding its PPH pilot program utilizing Patent Cooperation Treaty results (PCT-PPH) with the Korean Intellectual Property Office (KIPO). Under the previous USPTO-KIPO PCT-PPH pilot program, which began on June 1, 2010, only PCT work product generated by the KIPO could be used to enter the PPH at the USPTO. Under the new pilot program, PCT work product generated by the USPTO can also be used to enter the PPH in KIPO. Under the PCT-PPH framework, which was expanded on July 1, 2011 to cover PCT work product generated by both offices, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the USPTO or KIPO was the International Searching Authority or the International Preliminary Examination Authority may request that the other office fast track the examination of corresponding claims in corresponding applications.
The expanded PCT-PPH pilot program is scheduled to expire on May 31, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. USPTO requirements for participation in the USPTO-KIPO PCT-PPH pilot program can be found here, and KIPO requirements can be here.
USPTO and NPI Implement PCT-PPH Pilot Program
On June 20, the USPTO announced that it was implementing a new PCT-PPH pilot program with the Nordic Patent Institute (NPI) based on the NPI's PCT work products. Under the new pilot program, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the NPI was the International Searching Authority or the International Preliminary Examination Authority may request that the USPTO fast track the examination of corresponding claims in corresponding applications.
The USPTO-NPI PCT-PPH pilot program, which began on July 1, 2010, is scheduled to expire on June 30, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. USPTO requirements for participation in the USPTO-NPI PCT-PPH pilot program can be found here, and NPI requirements can be here.
USPTO and ILPO Begin PPH Pilot Program
On June 20, the U.S. Patent and Trademark Office announced that it had agreed to partner with the Israel Patent Office (ILPO) in establishing a PPH pilot program. As with other PPH programs, the USPTO-ILPO 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 the ILPO or 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-ILPO PPH pilot program, which began on July 1, 2010, is scheduled to expire on June 30, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. USPTO requirements for participation in the USPTO-ILPO PPH pilot program can be found here, and ILPO requirements can be here.
USPTO and PRV Initiate PCT-PPH Pilot Program
In May, the USPTO announced that it was implementing a new PCT-PPH pilot program with the Swedish Patent and Registration Office (PRV) based on PCT work products. Under the new pilot program, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the PRV was the International Searching Authority or the International Preliminary Examination Authority may request that the USPTO fast track the examination of corresponding claims in corresponding applications.
The USPTO-PRV PCT-PPH pilot program, which began on July 1, 2010, is scheduled to expire on May 31, 2013, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. USPTO requirements for participation in the USPTO-PRV PCT-PPH pilot program can be found here, and NPI requirements can be here.
USPTO to Test Enhanced PPH Framework
On July 1, the USPTO announced that it would be testing an enhanced framework for its PPH programs with the Canadian Intellectual Property Office (CIPO), Japan Patent Office (JPO), IPAustralia, National Board of Patents and Registration of Finland (NBPR), Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent), Spanish Patent and Trademark Office (SPTO) and United Kingdom Intellectual Property Office (UKIPO). According to the USPTO announcement, the enhanced framework modifies certain PPH requirements to make the program easier to use and more widely available to a greater number of applicants. In particular, PPH participation may be requested on the basis of results available on any patent family member from any office participating in the pilot, regardless of whether it was the office where the priority application was filed. In addition, the enhanced program utilizes a new definition of claim correspondence, which the USPTO indicated would make the system more flexible and user-friendly without compromising efficiency or quality. The enhanced PPH framework, which will go into effect on July 15, 2011, is scheduled to expire on July 14, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. Additional information regarding the enhanced framework may be found here, and will be made available here.
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