On Friday, the U.S. Patent and trademark Office announced that it was revising the requirements for requesting participation in the Patent Prosecution Highway (PPH) programs with seven other Patent offices. The PPH programs being affected by the changes are those between the USPTO and the Canadian intellectual property Office (CIPO), IP Australia (IPAU), Japan Patent Office (JPO), National Board of patents and Registration of Finland (NBPR), Federal Service on intellectual property, patents & trademarks of Russia (Rospatent), Spanish Patent and trademark Office (SPTO), or United Kingdom intellectual property Office (UKIPO). The USPTO noted that the changes were being made to improve the PPH programs and make them available to a wider range of applicants.
Under the revisions to the PPH programs, applicants wishing to participate in one of the seven PPH programs in the USPTO based on claims that were determined to be allowable by one of the seven other offices must satisfy the following conditions:
1. The U.S. application for which participation in the PPH program is requested and the corresponding application in one of the seven other offices must have the same priority/filing date. The notices for each of the revised programs (see links below) outline four cases and provide a number of flow chart examples in which this requirement would be satisfied. Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded from participation in the PPH.
2. At least one claim has been determined by one of the seven other offices to be allowable/patentable. The applicant must submit a copy of the allowable/patentable claims (along with an English translation, if necessary, and a statement of translation accuracy).
3. All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable by one of the seven other offices. Claims “sufficiently correspond” where the claims before the USPTO are of the same or similar scope or are narrower in scope than the claims before the other office.
4. Examination of the U.S. application for which participation in the PPH program is requested has not begun.
5. The applicant must file a request for participation in the PPH program and a request that the U.S. application be advanced out of turn for examination under 37 C.F.R.ยง 1.102(a).
6. The applicant must submit a copy of office actions (which are relevant to patentability) from the other office (along with an English translation, if necessary, and a statement of translation accuracy).
7. The applicant must submit an information disclosure statement listing the documents cited by the other office and provide copies of any references (except for U.S. patents or U.S. Patent application publications).
8. The request for participation in the PPH program and all supporting documents must be submitted via the EFS-Web.
Additional details regarding each of the above requirements, other procedures for the PPH programs, and flow chart examples of applications satisfying revised requirements for PPH participation can be found in pre-OG notices that were issued by the USPTO for each of the revised PPH programs (click on office to view notice): CIPO, IPAU, JPO, NBPR, Rospatent, SPTO, and UKIPO.
The revisions to these PPH programs took effect on July 15, 2011 and will remain in place for a trial period of one year ending on July 14, 2012 (which can be extended an additional year). The revisions apply to PPH requests filed on or after July 15, 2011.
In other PPH news, the USPTO issued OG notices on July 5 for the new PPH-PCT pilot program with the Swedish Patent and Registration Office (PRV) (1368 OG 46) and the new PPH program with the Israeli Patent Office (1368 OG 47). The USPTO also issued a pre-OG notice last month for the new PPH-PCT program with the Nordic Patent Institute (NPI).
Donald Zuhn
patentdocs.org