Patent Prosecution Highway (PPH)

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Patent Prosecution Highway (PPH). The Requirements and Strategies for Use. June 2013. Table of Contents. 2 5 6 7 13. Overview of Patent Prosecution Highway ................................................................... - PowerPoint PPT Presentation

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Patent Prosecution Highway (PPH)The Requirements and Strategies for UseJune 2013Michael D. SteinPrincipalStein IP LLC1400 Eye Street, NWSuite 300Washington, DC 20005(202) 216-9505www.steinip.commstein@steinip.com

6/12/20131Table of Contents2Overview of Patent Prosecution Highway ...................................................................Overview of PCT PPH ................................................................Countries and Patent Offices Participating .................................................................Revised Requirements for the Patent Prosecution Highway ...................................Example Situations to Apply PPH 2.0 .........................................................................2567132Overview of Patent Prosecution Highway (PPH)3Under the Patent Prosecution Highway:Applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track examination of corresponding claims in corresponding applications filed in the OSF.Expedites examination process for corresponding applications filed in participating countries by allowing examiners to reuse search and examination results.All claims in the OSF application must sufficiently correspond to the allowable claims in the OFF application.Overview of Patent Prosecution Highway (PPH)4PPH Benefits:Examination within two or three months from the grant of the PPH request provided the application has completed all its pre-exam processing and is ready for examination.More than 90% of PPH cases are allowed. For non-PPH cases, the allowance rate is less than 50%.PPH cases have fewer actions per disposal when compared to non-PPH cases on average, saving both applicants and Patent Offices time and expense.PPH enables applications filed in multiple jurisdictions to be fast tracked based on another Offices work productPetition Fee was eliminated in May 2010, making PPH even more cost effective.Potential for less prosecution history estoppel as a result of fewer office actions and responses.Overview of PCT-PPH5The PPH program has been expanded to permit eligibility for national and regional phase applications under the Patent Cooperation Treaty (PCT) on the basis of positive results in the PCT international phase.In this program, an applicant receiving a favorable Written Opinion or International Preliminary Report on Patentability from one of the participating Offices acting as an International Authority may request that a corresponding national phase entry or a national application filed at the USPTO receive fast-track examination.

Countries and Patent Offices Participating6

6/12/20136Revised Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with the Korean Intellectual Property Office 7I. Background

Since July 15, 2011, the United States Patent and Trademark Office (USPTO) and seven other offices (i.e., IP Australia (IPAU), Canada (CIPO), Finland (NBPR), Japan (JPO), Russia (ROSPATENT), Spain (SPTO) and United Kingdom (UKIPO)) have participated in an enhanced PPH pilot program called MOTTAINAI.

Under MOTTAINAI, participation in the PPH may be requested on the basis of search and examination results from any patent family application from any participating office, regardless of whether the participating office was the office of first filing. To implement the MOTTAINAI pilot, the USPTO revised its PPH requirements. See, for example, the notice available at http://www.uspto.gov/web/offices/com/sol/og/2011/week33/TOC.htm#ref13.

On January 29, 2012, the USPTO implemented PPH 2.0 with respect to the seven MOTTAINAI participating offices and the European Patent Office (EPO) to further enhance the PPH program and to encourage greater usage

The revised requirements for PPH 2.0 commenced with respect to the KIPO on January 29, 2013, and will terminate on January 28, 2014. The revised requirements will apply to PPH requests filed at the USPTO on or after January 29, 2013, based on claims that have been determined allowable in a corresponding application filed in the KIPO. and supersede the PPH notices to implement the prior PPH program between the USPTO and the KIPO.

The USPTO and KIPO will evaluate the results to determine whether to continue the program, although it may be terminated early under certain conditions.

As of January 29, 2013, the PPH 2.0 participating offices are IPAU, CIPO, EPO, NBPR, JPO, ROSPATENT, SPTO, UKIPO, the Portugal National Institute of Industrial Property (INPI-PT), and KIPO with respect to applications filed in the USPTO.

Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO8In order to be eligible to participate in the PPH 2.0 program at the USPTO, the following conditions must be met:At least one claim was determined by the PPH 2.0 participating office to be allowable/patentable. No longer need to submit a copy of the allowed claims from the application filed in the PPH 2.0 participating office or any English translation thereof.

The U.S. application and the corresponding application filed in the PPH 2.0 participating office (with the allowable/patentable claim(s)) must have the same priority/filing date.

In particular, the U.S. application (including national stage entry of a PCT application and a so-called bypass application filed under 35 U.S.C. 111(a) which validly claims benefit under 35 U.S.C. 120 to a PCT application): Case I is an application that validly claims priority under 35 U.S.C. 119(a) and 37 CFR 1.55 to one or more applications filed with the PPH 2.0 participating office (examples are provided in the ANNEX, Figures A, B, C and D), or Case II is an application which is the basis of a valid priority claim under the Paris Convention for the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures E, F and G), or Case III is an application which shares a common priority document with the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures H, I, J, K, L, M and N), or Case IV and the application filed in the PPH 2.0 participating office are derived from/related to a PCT application having no priority claim (example is provided in the ANNEX, Figure O).

Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH 2.0 program. Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO9All claims on file, as originally filed or as amended, for examination under the PPH 2.0 program in the U.S. application must sufficiently correspond to one or more of those claims indicated as allowable in the application filed in the PPH 2.0 participating office.

"Sufficiently corresponds" means, where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office.

A claim in U.S. application narrower in scope than the claims indicated as allowable in the application filed in the PPH 2.0 participating office will also sufficiently correspond if presented as a claim dependent upon a claim which is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. The additional limitation that makes the claim in the U.S. application narrower in scope than the allowable or patentable claims in the application filed in the PPH 2.0 participating office must have support in written description of the U.S. application.

A claim in the U.S. application which introduces a new or different category of claims to those claims indicated as allowable in the application filed in the PPH 2.0 participating office is not considered to sufficiently correspond. For example, if the only allowable or patentable claims in the application filed in the PPH 2.0 participating office are claims to a process of manufacturing a product, then any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims which sufficiently correspond to allowable or patentable claims in the application filed in the PPH 2.0 participating office.

A claims correspondence table in English must be submitted which indicates how all the claims in the U.S. application correspond to the allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. Any dependent claims with additional limitations must be clearly identified in the claims correspondence table. Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO10Substantive examination of the U.S. application for which participation in the PPH 2.0 program is requested cannot have begun.

The applicant must file a request for participation in the PPH 2.0 program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). Examples of forms to use are http://www.uspto.gov/forms/sb0020kr_fill.pdf (for Korea) and http://www.uspto.gov/forms/sb0020jp.pdf (for Japan).

Once the PPH is filed, the PPH request is generally decided within 2 months from filing the request. If granted, the examiner will generally examine the application within 2 or 3 months from grant of request, provided application has completed all pre-exam processing and is ready for examination.Revised Requirements for Requesting Participation in the