United States Patent and Trademark Office OG Notices: 25 September 2007
Patent Prosecution Highway Pilot Program between the
United States Patent and Trademark Office and the
United Kingdom Intellectual Property Office
I. Background
The United States Patent and Trademark Office (USPTO) has established a
21st Century Strategic Plan to transform the USPTO into a more
quality-focused, highly productive, responsive organization supporting a
market-driven intellectual property system. One of the specific action
plans of the 21st Century Strategic Plan is to share search results with
other intellectual property offices. By relying on the search results
obtained via partnerships with other intellectual property offices, we can
reduce duplication of efforts and decrease workload.
Since the beginning of July 2006, the USPTO has partnered with the Japan
Patent Office (JPO) on a Patent Prosecution Highway pilot program (PPH).
The PPH pilot program leverages accelerated examination procedures already
available in both offices to allow applicants in both offices to obtain
corresponding patents faster and more efficiently. The PPH pilot program
also permits each office to benefit from the work previously done by the
other office, in turn reducing workload and improving patent quality.
The USPTO had discussions with the United Kingdom Intellectual Property
Office (UK IPO) to launch a PPH pilot program similar to the PPH pilot
program between the USPTO and JPO (based on the same framework). USPTO and
UK IPO agreed that consistency between PPH pilot programs should be
maintained to the extent possible, to avoid creating burdens on applicants
and offices, and to ensure maximum work-sharing potential.
II. Patent Prosecution Highway Pilot Program
The PPH was established to enable an applicant whose claims are
determined to be allowable/patentable in the Office of first filing (OFF)
to have the corresponding application filed in the Office of second filing
(OSF) advanced out of turn for examination while at the same time allowing
the OSF to exploit the search and examination results of the OFF.
Where the USPTO is the OFF and the U.S. application contains claims that
are determined to be allowable/patentable, the U.S. applicant may likewise
request accelerated examination in the UK IPO for the corresponding
application filed in the UK IPO as the OSF. The procedures and requirements
for filing a request to the UK IPO for participation in the PPH pilot
program are available from the UK IPO web site at:
http://www.ipo.gov.uk/home.htm. Where the UK IPO is the OSF, the UK IPO
will access the necessary documents for requesting participation in the PPH
pilot program from the USPTO public PAIR system. In those rare situations
where the U.S. application has not been published, and therefore the U.S.
file wrapper is not available via public PAIR, applicant would have to
provide the necessary copies to the UK IPO. In the event that the UK IPO
requests a copy of the necessary documents from the USPTO, the USPTO would
not provide such copies to the UK IPO unless authorization from the
applicant is of record in the U.S. application.
Where the USPTO is the OSF and the corresponding application filed in
the UK IPO as the OFF contains claims that are determined to be
allowable/patentable, the applicant may request participation in the PPH
pilot program in the USPTO and petition to make the U.S. application
special under the PPH pilot program. The procedures and requirements for
filing a request in the USPTO for participation in the PPH pilot program
are set forth below.
A. Trial Period for the PPH Pilot Program
The PPH pilot program will commence on September 4, 2007, for a period
of one year ending on September 4, 2008. The trial period may be extended
for up to an additional year if necessary to adequately assess the
feasibility of the PPH program. The USPTO and the UK IPO will evaluate the
results of the pilot program to determine whether and how the program
should be fully implemented after the trial period. The Offices may also
terminate the PPH pilot program early if the volume of participation
exceeds manageable level, or for any other reason. Notice will be published
if the PPH pilot program will be terminated before the September 4, 2008
date.
B. Requirements for Requesting Participation in the PPH Pilot Program in
the USPTO
In order to be eligible to participate in the PPH pilot program, the
following conditions must be met:
(1) The U.S. application is
(a) a Paris Convention application, or
(b) 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), or
(c) 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 claiming priority under 35 U.S.C. 119(a) and 37 CFR
1.55 to one or more applications filed in the UK IPO. Continuing
applications that validly claim the benefit of the U.S. application under
35 U.S.C. 120 and the priority date of UK IPO application(s) under 35
U.S.C. 119(a) are also eligible. Provisional applications, plant and design
applications, reissue applications, reexamination proceedings, and
applications subject to a secrecy order are excluded.
(2) The UK IPO application(s) have at least one claim that was determined
by the UK IPO to be allowable/patentable. Applicant must either submit a
copy of the allowable/patentable claims from the UK IPO application(s) or
request that the USPTO obtain a copy of the allowable/patentable claims
from the UK IPO. If the USPTO is not able to obtain a copy of the
allowable/patentable claims from the UK IPO, applicant will be notified and
requested to provide the necessary documents.
(3) All the claims in each U.S. application for which a request for
participation in the PPH pilot program is made must sufficiently correspond
or be amended to sufficiently correspond to the allowable/patentable claims
in the UK IPO application(s). Claims will be considered to sufficiently
correspond where, accounting for differences due to claim format
requirements, the claims are of the same or similar scope. Applicant is
also required to submit a claims correspondence table. The claims
correspondence table must indicate how all the claims in the U.S.
application correspond to the allowable/patentable claims in the UK IPO
application(s).
(4) Examination of the U.S. application for which participation in the PPH
pilot program is requested has not begun.
(5) Applicant must file a request for participation in the PPH pilot
program and a petition to make the U.S. application special under the PPH
pilot program. A sample request/petition form is attached to this notice.
Applicants are encouraged to use the USPTO request/petition form. A
petition fee under 37 CFR 1.17(h) for the petition to make special under 37
CFR 1.102(d) is required and must be submitted.
(6) Applicant must submit a copy of all the office actions from each of the
UK IPO application(s) containing the allowable/patentable claims that are
the basis for the request or request that the USPTO obtain a copy from the
UK IPO. If the USPTO is not able to obtain a copy of all the office actions
from the UK IPO, applicant will be notified and requested to provide the
necessary documents.
(7) Applicant must submit an information disclosure statement listing the
documents cited by the UK IPO examiner in the UK IPO office action.
Applicant must submit copies of all the documents cited in the UK IPO
office action except U.S. patents or U.S. patent application publications.
The request for participation in the PPH pilot program and all the
supporting documents must be faxed to:
The Office of the Commissioner for Patents at 571-273-0125, directed to
the attention of Magdalen Greenlief.
Where the request for participation in the PPH pilot program and special
status are granted, applicant will be notified and the U.S. application
will be advanced out of turn for examination. In those instances where the
request for participation in the PPH pilot program does not meet all the
requirements set forth above, applicant will be notified and the defects in
the request will be identified. Applicant will be given one opportunity to
perfect the request in a renewed request for participation. If perfected,
the request and special status will be granted, applicant will be notified
and the U.S. application will be advanced out of turn for examination. If
not perfected, applicant will be notified and the application will await
action in its regular turn.
(8) Request for participation in the PPH pilot program and special status
granted in a parent application will not carry over to a continuing
application. Continuing applications must separately fulfill the conditions
set forth above.
If any of the documents identified in items (2), (6) and (7) above have
already been filed in the U.S. application prior to the request for
participation in the PPH pilot program, it will not be necessary for
applicant to resubmit these documents with the request for participation.
Applicant may simply refer to these documents and indicate in the request
for participation in the PPH pilot program when these documents were
previously filed in the U.S. application.
C. Special Examining Procedures
Once the request for participation in the PPH pilot program and special
status have been granted to the U.S. application, the U.S. application will
be taken up for examination by the U.S. examiner before all other
categories of applications except those clearly in condition for allowance,
those with set time limits, such as examiner's answers, and those that have
been granted special status for "accelerated examination."
Any claims amended or added after the grant of the request for
participation in the PPH pilot program must sufficiently correspond to one
or more allowable/patentable claims in the UK IPO application(s). Applicant
is required to submit a claims correspondence table along with the
amendment (see B.(3) above). If the amended or newly added claims do not
sufficiently correspond to the allowable/patentable claims in the UK IPO
application(s), the amendment will not be entered and will be treated as a
non-responsive reply. Applicant must also submit copies of any office
actions from each of the UK IPO application(s) issued after the grant of
the request for participation in the PPH pilot program (especially where
the UK IPO might have reversed a prior holding of allowability).
The PPH program does not absolve applicants of all their duties under 37
CFR 1.56 and 37 CFR 10.18. By complying with requirements (6) and (7)
identified above, applicants would be considered to have complied with
their duties to bring to the attention of the USPTO any material prior art
cited in the corresponding foreign application(s) (see MPEP 2001.06(a)).
Applicants still have a duty of candor and good faith, including providing
to the USPTO other information known to them to be material to
patentability.
Any inquiries concerning this notice may be directed to Magdalen
Greenlief, Office of the Deputy Commissioner for Patent Examination Policy
at 571-272-8800 or at magdalen.greenlief@uspto.gov.
August 30, 2007 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office