United States Patent and Trademark Office OG Notices: 30 January 2007
Revised Requirements for Requesting Participation in the Patent Prosecution Highway Pilot Program in the USPTO On July 3, 2006, the United States Patent and Trademark Office (USPTO) commenced a Patent Prosecution Highway pilot program (PPH) for a period of one year ending on July 3, 2007. A notice entitled "Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office" was published on June 13, 2006 at 1307 Off. Gaz. Pat. Office 61 providing the details of the PPH pilot program. The notice indicated that one of the requirements for requesting participation in the PPH pilot program in the USPTO is that applicant must submit a copy of all the Office actions (including a "Decision to Grant a Patent") from each of the Japan Patent Office (JPO) application(s) containing the allowable/patentable claims that are the basis for the request, along with an English translation thereof and a statement that the English translation is accurate. Based on the requests filed since July 3, 2006, the USPTO has decided that it will NOT be necessary for applicant to submit a copy of the "Decision to Grant a Patent," an English translation of the "Decision to Grant a Patent" and a statement that the translation is accurate (note that applicant must still comply with all the other requirements identified in subsection II.B. of the June 13, 2006 notice in order to be eligible to participate in the PPH pilot program). The USPTO will obtain a copy of the "Decision to Grant a Patent" along with a machine translation into the English language via the Dossier Access System. The form, "Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program between the JPO and the USPTO," PTO/SB/20 (dated 12-06) has been revised to indicate that it is not necessary for applicant to submit a copy of the "Decision to Grant a Patent" and an English translation thereof. A copy of the revised form PTO/SB/20 is available at www.uspto.gov/web/forms/sb0020.pdf. This revised requirements for requesting participation in the PPH pilot program is effective immediately. Please continue to direct inquiries on the PPH pilot program to Magdalen Greenlief at 571-272-8800 or via e-mail addressed to magdalen.greenlief@uspto.gov. January 3, 2007 JOHN DOLL Commissioner for Patents