By Donald Zuhn --
EPO, JPO, and USPTO Meet at Annual Trilateral Conference
The European Patent Office, Japan Patent Office, and U.S. Patent and Trademark Office gathered last week at the 29th annual Trilateral Conference in St. Germain-en-Laye, France to discuss ways to further harmonize their patent systems. This year's conference focused on a number of topics, including data standards, work-sharing, patent classification, and the trilateral Patent Prosecution Highway pilot project utilizing PCT work products (PPH-PCT). In a press release issued by the EPO, the host of this year's conference noted that the three offices had agreed to launch the Common Citation 
Document (CCD), a new tool that will make it easier to access results from patent searches carried out by multiple offices for the same invention. The offices also agreed to extend the duration of the "Patent Prosecution Highway" (PPH) pilot program that reuses PCT International phase work (PCT-PPH) for another two years.
In a statement released after the conference concluded, the EPO called the gathering "[t]he most successful trilateral conference in 29 years." The EPO noted that the CCD "fills an important gap in the information services for the public and IP authorities by offering a one-stop overview of all documents cited by the EPO, JPO and USPTO in the search process for applications for the same invention pending simultaneously at the three offices." The CCD can be accessed here.
USPTO and SIPO Establish PPH and PCT-PPH Pilot Programs
Last week, the U.S. Patent and Trademark Office announced that two new Patent Prosecution Highway (PPH) pilot programs with China’s State Intellectual Property Office (SIPO) would launch on December 1, 2011. The pilot programs will apply to qualifying patent applications filed under the Paris Convention ("Paris Route") or the Patent Cooperation Treaty (PCT). As with other Paris Route PPH programs, the USPTO-SIPO 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 USPTO or SIPO 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. Under the USPTO-SIPO PCT-PPH, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the USPTO or SIPO 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 USPTO-SIPO PPH pilot programs are scheduled to expire on November 30, 2012, but may be extended for up to one year upon mutual agreement.
Since implementing its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) on July 3, 2006, the U.S. Patent and Trademark Office has established a total of twenty-one PPH programs with other patent 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), the Taiwan Intellectual Property Office (TIPO), the Norwegian Industrial Property Office (NIPO), and China’s State Intellectual Property Office (SIPO).
Fee for Non-Electronic Filing of Application Takes Effect
On Tuesday, the U.S. Patent and Trademark Office published a notice in the Federal Register (76 Fed. Reg. 70651), informing practitioners and applicants that the $400 fee for filing an application non-electronically, as set forth in Section 10(h) of the Leahy-Smith America Invents Act (AIA), is now in effect. The fee applies to original (i.e., non-reissue) patent applications, except for design, plant, or provisional applications, that are not filed by electronic means.
Apart from the above provision, the AIA also provides an additional electronic filing incentive in Section 11(h) for small entities filing applications electronically. This additional incentive reduces the basic filing fee by 75% -- from $330 to $95 -- and became effective on the date of enactment of the AIA (i.e., September 16, 2011).
EFS-Web & Private PAIR Users Advised to Refrain from Installing Java Updates
Yesterday, the U.S. Patent and Trademark Office distributed an eAlert informing EFS-Web and Private PAIR users that two recent Java updates are incompatible with the software used for authentication on both systems. The two versions are Java 7, which was released on July 28, 2011, and Java 6 Update 29, which was released on October 18, 2011. The EBC noted that the updates require a software patch, and that the Office had obtained the patch for Java 6 Update 29 and had begun testing to ensure that the EFS-Web and Private PAIR worked properly with the patch. The Office expected to complete testing within a week. However, the Office is still working to resolve the issues with the Java 7 update. EFS-Web and Private PAIR users having problems authenticating are advised to uninstall the affected Java update and install Java 6 update 26, which is the most recent compatible version of Java. According to the eAlert, Java 6 update 26 and instructions for removing the affected Java update from computers running a Linux, Solaris, or Windows OS can be obtained here. The Office advises Windows users to select the "Windows Offline Installation" download option at the above link.
The Office has provided no information regarding how to resolve authentication on computers running the Mac OS. However, it should be noted that Apple released Java for Mac OS X 10.7 Update 1, which updates Java SE 6 to version 1.6.0_29, on November 8, 2011. Unfortunately, Java for Mac OS X 10.5 Update 10, which updated Java SE 6 to 1.6.0_26, is not compatible with Mac OS 10.7 (Lion), which was released in July. Mac users running Lion may have to wait for the Office to complete its testing before regaining EFS-Web and Private PAIR functionality.
UPDATE: A notice posted on the EFS-Web on November 18 indicates that Java 6 Update 29 is now supported, but that Java 7 remains incompatible.
The CCD sounds like a welcome, and necessary, step forward. And any extension of the PPH is, of course, good news; the PPH process makes international patent filings somewhat less expensive for applicants, and also streamlines the process. I'm glad the U.S. continues to expand this program.
http://www.generalpatent.com/blog/
Posted by: patent litigation | November 28, 2011 at 11:10 PM