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American Intellectual Property Law Association

Update regarding PCT and PPH at the USPTO

Yuichi WatanabeJoint Meeting of AIPLA and JPO in 2014 (Patent)

Tokyo

April 7, 2014

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Update regarding PCTat the USPTO

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PCT at the USPTO

• Effective December 18, 2013, USPTO has implemented new rules pertaining to the Patent Law Treaties Implementation Act (PLTIA) of 2012– The most notable changes relates to:

• (1) filing date requirements for a patent application; • (2) restoration of patent rights via revival of abandoned

applications and acceptance of delayed maintenance fee payments; and

• (3) restoration of the right of priority/benefit in a subsequent application filed within two months of the expiration of priority deadline.

“Changes to Implement the Patent Law Treaty,” 78 Fed. Reg. 62367 (Oct. 21, 2013) (final rule)

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PCT at the USPTO

• Examples: – A claim is no longer required for a nonprovisional

application (other than for a design patent) to be entitled to filing date

• Does NOT apply to PCT applications

– A nonprovisional application may be filed ‘‘by reference’’ to a previously filed application instead of filing the specification and drawings

– Abandoned applications may be revived and delayed maintenance fee payments may be accepted solely on the basis of unintentional delay

• “Unavoidable” delay no longer a basis for revival or acceptance of late maintenance fees

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PCT at the USPTO

• Another example: – If application is filed after the expiration of the 12-month

period set forth in 35 U.S.C. 119(a)/(e)*, but within two months from the expiration of that period the right of priority in the application may be restored upon petition and payment of the applicable fee if the delay in filing the subsequent application within the 12-month period was unintentional

• *119(a): priority to earlier-filed foreign application– Period is six months in the case of a design application

• *119(e): priority to provisional application

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PCT at the USPTO

• PLTIA rules that affect PCT (and national phase) applications:– Petition to revive unavoidably abandoned

international application is no longer available– Petition fee to revive unintentionally abandoned

international application decreased from $1,900 to $1,700 (for small entities, $950 to $850)

• Micro entity discount is no longer available

– Request fee for restoration of right of priority increased from $1,420 to $1,700 (for small entities, $710 to $850)

• micro entity discount is no longer available

http://www.uspto.gov/patents/init_events/pct/Announcements.jsp (last visited March 26, 2014)

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PCT at the USPTO

• Effective Jan. 1, 2014, small and micro entity discounts are available for the following PCT fees:– Transmittal fee; – Search fee;– Supplemental Search fee; – Fee for Transmitting Application to IB to act as

Receiving Office; – Preliminary Examination fees;  – Supplemental Examination fees; and– Late Payment fee

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USPTO PCT Trends - Statistics

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USPTO PCT Trends - Statistics

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USPTO PCT Trends - Statistics

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Update regarding PPH at the USPTO

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USPTO PPH Pilot Programs

• On January 6,  2014, the USPTO launched two pilot programs that simplify access to participating PPH offices– Global PPH – IP5 PPH

• Global PPH pilot program will run for a period of one year ending on January 5, 2015

• IP5 PPH pilot program will run for a period of three years ending on January 5, 2017

Michelle K. Lee, “Implementation of the Global and IPS Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices” (Feb. 10, 2014)

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USPTO PPH Pilot Programs

• Global PPH and IP5 PPH will run concurrently and are substantially identical– Both have same requirements – USPTO applicants need not even specify which pilot

program is being used

• Because USPTO elected to participate in both programs, a PPH request may be filed in the USPTO based on the work product of any office participating in either pilot program

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USPTO PPH Pilot Programs

• For USPTO applications, Global PPH and IP5 PPH pilot programs supersede any prior PPH program between USPTO and other Global PPH and IP5 PPH participating offices

• Any existing PPH programs between USPTO and offices not participating in either the Global PPH pilot program or the IP5 PPH pilot program remain in effect

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Offices Participating in PPH Pilot Programs

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Eligibility for USPTO PPH Pilot Programs

• (1) U.S. application must have the same earliest date (priority or filing date) as that of a corresponding national/regional application filed with another participating office, or a corresponding international application for which one of the participating offices was ISA/IPEA;

• (2) Corresponding application has at least one claim indicated by OEE* to be allowable or patentable;– *OEE: Office of Earlier Examination

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Eligibility for USPTO PPH Pilot Programs

• (3) Substantive examination of the U.S. application has not begun; and

• (4) All claims in U.S. application must sufficiently correspond to the allowable/patentable claims in the corresponding OEE application– “Sufficiently correspond” means, besides differences

due to claim format requirements, the claims are of the same or similar scope

– Dependent claims narrower in scope may sufficiently correspond, but a claim in U.S. application that introduces a new/different category of claims is NOT considered to sufficiently correspond

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Required Docs for USPTO PPH Pilot Programs

• (1) Request for participation in the Global/IP5 PPH pilot program and a request that the U.S. application be advanced out of turn for examination;

• (2) Claims correspondence table in English, indicating how and certifying that all claims in the U.S. application correspond to allowable/patentable claims in the OEE application;

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Required Docs for USPTO PPH Pilot Programs

• (3) An (IDS) listing the documents cited in the office action or PCT work product along with copies of all documents (except U.S. patents and U.S. patent application publications.);

• (4) A copy of the office action issued just prior to the Decision to Grant in the OEE national/regional application or the latest international work product in the international phase of the OEE PCT application, along with its English translation;– If the office action or PCT work product is already

present in the U.S. application or is available via the Dossier Access System Web, just identify the document

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Other Notes on USPTO PPH Pilot Programs

• If the PPH participation request does NOT meet all the requirements, applicant will be given only one opportunity to perfect the request

• However, USPTO will NOT suspend action on the application while awaiting a renewed request for participation– Thus, if the application is picked up for examination after

applicant has been notified of the defects in the request, any renewed request will be dismissed

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Other Notes on USPTO PPH Pilot Programs

• PPH pilot programs carry over to an RCE of the application, but NOT to a continuing application  

• Any claims amended or added after the grant of the request for participation in the Global/IP5 PPH pilot program must sufficiently correspond to one or more allowable/patentable claims in the OEE application

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USPTO PPH Statistics (as of Dec. 2013)

• Number of national-PPH requests: 12403– JPO was OEE in 8614– PPH request grant rate: 87.9%– First action allowance rate: 27.1%– Avg. pendency, request to first OA: 4.4 mos.– Avg. pendency, request to final decision: 14.0 mos.– Avg. number of OAs: 1.01

http://www.jpo.go.jp/ppph-portal/statistics.htm (last visited March 26, 2014)

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USPTO PPH Statistics (as of Dec. 2013)

• Number of PCT-PPH requests: 8764– JPO was ISA/IPEA in 1690– PPH request grant rate: 90.3%– First action allowance rate: 19.9%– Avg. pendency, request to first OA: 5.2 mos.– Avg. pendency, request to final decision: 14.1 mos.– Avg. number of OAs: 0.46

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Thanks for your attention! Questions?

Yuichi WatanabeOsha Liang LLP

Two Houston CenterSuite 3500

909 Fannin St.Houston, TX 77009 USA

1-713-228-8600

watanabe@oshaliang.com