By Donald Zuhn --
For the past few weeks, the U.S. Patent and Trademark Office has been busy implementing changes brought about by the Leahy-Smith America Invents Act (see "USPTO Implements AIA Changes to Inter Partes Reexamination"; "USPTO Updates Fee Schedule, But Does Not Yet Offer Micro Entity Discount"; "USPTO Implements Prioritized Examination Track under AIA"; and "President Signs AIA into Law; USPTO Begins Implementation of Act"). Lost in the implementation of these AIA-related changes were two changes unrelated to the AIA.
USPTO Extends Patent Prosecution Highway Pilot Program with HPO
Last month, U.S. Patent and Trademark Office Director David Kappos authorized an extension of the Patent Prosecution Highway (PPH) pilot program with the Hungarian Patent Office (HPO) that was begun on July 1, 2010 (see "USPTO Continues to Expand Patent Prosecution Highway"). The PPH pilot permits an applicant having an application whose claims have been allowed in the HPO 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 the HPO) that at least one claim in an application is patentable may request that the HPO (or USPTO) fast track the examination of corresponding claims in the corresponding application in that office. According to a notice regarding the extension of the USPTO-HPO PPH, both offices have agreed to continue the pilot program (for an unspecified period of time) in its current state in order to collect more information before any formal decision on the program is made.
The USPTO has established PPH programs with nineteen 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), Nordic Patent Institute (NPI), and the Israel Patent Office (ILPO), and the Taiwan Intellectual Property Office (TIPO).
USPTO Eliminates Prior Art Listing on Reexamination Certificates
In a pre-OG notice issued last month, the USPTO indicated that it would no longer list prior art documents cited by the patent owner of third parties and considered by the Office, or prior art documents cited by the Office during reexamination proceedings, on reexamination certificates. The Office states that prior art listings are being eliminated in order to expedite issuance of reexamination certificates, and because electronic listings of the art considered by the Office during reexamination proceedings can be readily identified using the Patent Application Information Retrieval (PAIR) system. As a result of the above change, the Office will revise M.P.E.P. §§ 2290 and 2690 accordingly.
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