AIPLA PPH Users Meeting May, 2010 Report on Patent Prosecution Highway Manny Schecter Chief Patent...
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AIPLA PPH Users Meeting May, 2010 Report on Patent Prosecution Highway Manny Schecter Chief Patent Counsel [email protected]
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Transcript of AIPLA PPH Users Meeting May, 2010 Report on Patent Prosecution Highway Manny Schecter Chief Patent...
AIPLA PPH Users Meeting
May, 2010
Report on Patent Prosecution Highway
Manny Schecter Chief Patent [email protected]
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AIPLA PPH Users Meeting
May, 2010
Agenda
Our experiences with PPH
Usage summary Number of office actions & prosecution periodRate of patent grants
Benefits
Suggested Improvements
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AIPLA PPH Users Meeting
May, 2010
Usage Summary
Over 300 petitions filed to enter PPH
Primary routes:
JP-US PPHUS-JP PPHPCT PPH
Significant cost savings depending upon path:
Patent office fees to enter PPHNumber of office actions eliminatedLocal labor/legal costs
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AIPLA PPH Users Meeting
May, 2010
Number of Office Actions & Prosecution Period
*1 Period from petition for JP US PPH with USPTO to 1st US office action or 1st action allowance*2 Period from US filing date to 1st US office action or 1st action allowance*3 Period from petition for US JP PPH with JPO to 1st JP office action or 1st action allowance*4 Period from request for examination with JPO to 1st JP office action or 1st action allowance
Route
Number of
Office Actions
in an OSF*
Period to receive
a 1st OA in OSF/
daysJP US PPH 1.2 134 (*1
JP US Non PPH 2.1 966 (*2
US JP PPH 1.3 49 (*3
US JP Non PPH 2.2 1012 (*4
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AIPLA PPH Users Meeting
May, 2010
Rate of Patent Grants
Route Grant Rate %
JP US PPH 82.6
JP US non PPH 72.0
US JP PPH 86.7
US JP Non PPH 69.5
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AIPLA PPH Users Meeting
May, 2010
Summary of Benefits
(1) Regarding prosecution in OSF
- Cost reduction due to decrease of the number of OAs
- Increased grant rate
- Significant reduction of prosecution period
- Simple formality requirement to trigger PPH in OSF
(2) Regarding practitioners’ workload in PPH
- Early office action in OSF – improves applicant recall of invention, thereby increasing efficiency and quality of prosecution
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AIPLA PPH Users Meeting
May, 2010
Suggested Improvements
(1) Symmetrical processes
Issue: Currently, offices’ requirements for PPH vary. For example, a petition fee is necessary in USPTO while JPO does not require any such fee.
Recommendation: Adopt symmetrical processes.
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AIPLA PPH Users Meeting
May, 2010
Suggested Improvements
(2) Clarification of requirement for “sufficiently corresponding claims”
Issue: OSF requires sufficient correspondence of allowed claims in OFF and claims to be examined in OSF, but the standard is not clear. Copying of claims is generally effective to avoid denial of a petition.
Recommendation: Clearly define “sufficiently corresponding” .
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AIPLA PPH Users Meeting
May, 2010
Suggested Improvements
(3) Translations of office actions
Issue: Some OSFs require translations of office actions together with petitions for entering PPH. Translation cost is predominant additional cost, but substantially common parts are not standardized and mere cosmetics unduly increase translation expense.
Recommendation: Adopt a common office action format.
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AIPLA PPH Users Meeting
May, 2010
Suggested Improvements
(4) PCT information in WIPO Database
Issue: In PCT PPH, a favorable opinion by ISA or IPEA is a condition for initiating examination in OSF. Currently, WIPO provides a database which includes (1) PCT documents in PDF format which are not searchable, and (2) searchable bibliographic data which does not indicate whether opinion is favorable or unfavorable.
Recommendation: Facilitate applicants’ search for candidates of PCT PPH by including indications of favorability in the searchable bibliographic data.
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AIPLA PPH Users Meeting
May, 2010
