United States Patent and Trademark Office OG Notices: 12 June 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),
which was scheduled to last for a period of one year ending on July 3,
2007, but extendible for an additional year to July 3, 2008. 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 requirements for requesting participation in the PPH pilot
program were revised on January 30, 2007 to no longer require applicant
to submit a copy of the "Decision to Grant a Patent" along with an
English translation thereof. See notice entitled "Revised
Requirements for Requesting Participation in the Patent Prosecution
Highway Pilot Program in the USPTO" published at 1314 Off. Gaz.
Pat. Office 1398 on January 30, 2007.

   The USPTO and JPO recently agreed to a further modification of
the pilot program to permit certain applications based on PCT filings
to qualify for participation in the PPH pilot program. (The June 13,
2006 notice excluded any PCT applications). Effective
immediately, where the USPTO is the Office of second filing (OSF),
a national stage application under the PCT (an application which
entered the national stage in the U.S. from a PCT international
application after compliance with 35 U.S.C. 371) which validly claims
priority under 35 U.S.C. 119(a)/365(b) to one or more applications
filed in the JPO (Office of first filing) may be eligible to
participate in the PPH pilot program. That is, (1) a national
application must have been first filed in JPO (the JP national
application must be (a) the priority application, or (b) another JP
national application which validly claims domestic priority to the
first JP national application, or (c) a divisional application of the
first JP national application, or (d) a PCT application which enters
national stage in the JPO which PCT application validly claims priority
to the first JP national application); (2) the JP national application
is examined and found to have one or more claims allowable by the JPO;
(3) a PCT international application validly claiming priority to the JP
national application is filed and enters the national stage in the
U.S.; and (4) the claims in the national stage application sufficiently
correspond to the allowable/patentable claims in the JP national
application. That national stage application filed in the U.S. may be
eligible to participate in the PPH pilot program provided all the other
requirements identified in the two prior notices are satisfied.

   In addition, 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, which PCT application validly claims priority under 35
U.S.C. 365(b) to one or more applications filed in the JPO (Office of
first filing) may also be eligible to participate in the PPH pilot
program. That is, (1) a national application must have been first filed
in the JPO (the JP national application must be (a) the priority
application, or (b) another JP national application which validly
claims domestic priority to the first JP national application, or (c) a
divisional application of the first JP national application, or (d) a
PCT application which enters national stage in the JPO which PCT
application validly claims priority to the first JP national
application); (2) the JP national application is examined and found to
have one or more claims allowable by the JPO; (3) a PCT international
application is filed validly claiming priority to the JP national
application; (4) rather than entering national stage in the U.S. under
the PCT, applicant files an application under 35 U.S.C. 111(a) (by-pass
application) validly claiming benefit under 35 U.S.C. 120 to the PCT
international application; and (5) the claims in the by-pass
application sufficiently correspond to the allowable/patentable claims
in the JP national application. The by-pass application may be eligible
to participate in the PPH pilot program provided all the other
requirements identified in the two prior notices are satisfied.

   If the JP national application containing the
allowable/patentable claims is a JP application which is other than the
priority application (e.g., the JP national application with the
allowable/patentable claims validly claims domestic priority to the
first JP national application), applicant must indicate on the form,
PTO/SB/20, "Request for Participation in the Patent Prosecution
Highway (PPH) Pilot Program between the JPO and the USPTO" how the JP
national application with the allowable/patentable claims is related to
the JP priority application. A copy of the form PTO/SB/20 is available
at www.uspto.gov/web/forms/sb0020.pdf.

   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.

May 17, 2007                                                      JOHN DOLL
                                                   Commissioner for Patents