| Patent Prosecution Highway, New Route, "Triway" |
Referenced Items (151, 152, 153, 154, 155, 156, 157, 158, 159, 160, 161, 162, 163, 164, 165, 166, 167, 168, 169, 170) |
(163) Patent Prosecution Highway
Pilot Program between the United States
Patent and Trademark Office and IP Australia
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 items 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, the USPTO can
reduce duplication of efforts and decrease workload.
From July 2006 to January 2008, the USPTO partnered with the Japan
Patent Office (JPO) to establish the first Patent Prosecution Highway pilot
program (PPH). The PPH 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 also
permits each office to benefit from the work previously done by the other
office, in turn helping to reduce workload and improve patent quality. The
USPTO and the JPO began full implementation of the PPH program starting
January 4, 2008.
USPTO has also commenced separate PPH pilot programs with the Canadian
Intellectual Property Office (CIPO), the Korean Intellectual Property
Office (KIPO), and the United Kingdom Intellectual Property Office (UK
IPO), based on the same framework as the PPH between the USPTO and JPO.
Following on these partnerships, the USPTO and IP Australia (IPAU) have
agreed to launch a PPH pilot program similar to the PPH pilot programs
noted above.
II. Patent Prosecution Highway Pilot Program
The PPH was established to enable an applicant whose claims are
determined to be allowable 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, the applicant may likewise request
accelerated examination at IPAU for the corresponding application filed
with IPAU as the OSF. The procedures and requirements for filing a
request with IPAU for participation in the PPH pilot program are available
from the IPAU web site at: www.ipaustralia.gov.au. Where IPAU is the OSF,
applicant may provide IPAU with the necessary documents for requesting
participation in the PPH pilot program, or request that IPAU obtain 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 will be responsible for
providing the necessary documents to IPAU.
Where the USPTO is the OSF and the corresponding application filed with
IPAU as the OFF contains claims that are determined to be allowable, 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. Note that the procedures for a petition to make special under the
accelerated examination program set forth in MPEP 708.02(a) do NOT apply to
a petition to make 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.
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A. Trial Period for the PPH Pilot Program
The PPH pilot program will commence on April 14, 2008, for a period of
one year ending on April 14, 2009. 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 IPAU 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 April 14, 2009 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 which either
(i) validly claims priority under 35 U.S.C. 119(a) and 37 CFR 1.55
to one or more applications filed with IPAU, or
(ii) validly claims priority under 35 U.S.C. 119(a)/365(a) to a
PCT application that contains no priority claims,
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),
which PCT application
(i) validly claims priority under 35 U.S.C. 365(b) to an
application filed with IPAU, or
(ii) validly claims priority under 35 U.S.C. 365(b) to a PCT
application that contains no priority claims, or
(iii) contains no priority claim,
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
(i) validly claims priority under 35 U.S.C. 365(b) to an
application filed with IPAU, or
(ii) validly claims priority under 35 U.S.C. 365(b) to a PCT
application that contains no priority claims, or
(iii) contains no priority claim.
Examples of U.S. applications that fall under requirement (1) are:
(1)(a)(i):
(1)(a)(ii):
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* DO - Designated Office
(1)(b)(i):
(1)(b)(ii):
(1)(b)(iii):
(1)(c)(i):
(1)(c)(ii):
(1)(c)(iii):
Provisional applications, plant and design applications, reissue
applications, reexamination proceedings, and applications subject to a
secrecy order are excluded and not subject to participation in the PPH.
(2) The IPAU application(s) has at least one claim that was determined
by IPAU to be allowable. Applicant must submit a copy of the allowable
claims from the IPAU application(s). If the IPAU office action does not
explicitly state that a particular claim is allowable, applicant must
include a statement in the request for participation in the PPH pilot
program that no rejection has been made in the IPAU office action regarding
that claim and therefore, the claim is deemed allowable by IPAU.
(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 claims in the
IPAU 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 in English. The claims correspondence
table must indicate how all the claims in the U.S. application correspond
to the allowable claims in the IPAU 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 (PTO/SB/20AU) is available
from the USPTO web site at http://www.uspto.gov on April 14, 2008.
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 (which are
relevant to patentability) from each of the IPAU application(s) containing
the allowable claims that are the basis for the request. In addition,
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applicant must submit copies of any office actions (which are relevant to
patentability) from the IPAU application(s) issued after the grant of the
request for participation in the PPH pilot program in the USPTO (especially
where IPAU might have reversed a prior holding of allowability).
(7) Applicant must submit an information disclosure statement (IDS)
listing the documents cited by the IPAU examiner in the IPAU office action
(unless such an IDS has already been filed in the U.S. application).
Applicant must submit copies of all the documents cited in the IPAU office
action (unless the copies have already been filed in the U.S. application)
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 submitted to the USPTO via EFS-Web and indexed
with the following document description: "Petition to make special under
Patent Pros Hwy." Information regarding EFS-Web is available at
http://www.ustpo.ogv/ebc/efs_help.html. Any preliminary amendments and IDS
submitted with the PPH documents must be separately indexed as a preliminary
amendment and IDS, respectively.
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 (which must be
submitted via EFS-Web and indexed accordingly as noted above). Note that
action on the application by the examiner will NOT be suspended
(37 CFR 1.103) awaiting a reply by the applicant to perfect the request in
a renewed request for participation. That is, if the application is picked
up for examination by the examiner after applicant has been notified of the
defects in the request, any renewed request will be dismissed. If the
renewed request is perfected and examination has not begun, 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 claims in the IPAU 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
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to the allowable claims in the IPAU application(s), the amendment will not
be entered and will be treated as a non-responsive reply.
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 B.(6) and
B.(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.
March 31, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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