| Patent Prosecution Highway |
Referenced Items (165, 166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176, 177, 178, 179, 180, 181, 182, 183, 184, 185, 186, 187, 188, 189, 190, 191, 192, 193, 194, 195, 196, 197, 198, 199, 200, 201, 202, 203, 204, 205, 206, 207, 208, 209, 210, 211, 212, 213, 214, 215, 216, 217, 218, 219) |
(205) Patent Prosecution Highway Pilot Program
between the United States Patent and Trademark Office
and the German Patent and Trade Mark 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 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 on January 4,
2008.
The USPTO commenced a PPH pilot program with the Korean Intellectual
Property Office (KIPO) on January 28, 2008. The pilot program ended on
January 28, 2009, and full implementation of the PPH program began on
January 29, 2009.
USPTO has also commenced separate PPH pilot programs with the United
Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual
Property Office (CIPO), IP Australia (IPAU), the European Patent Office
(EPO), the Danish Patent and Trademark Office (DKPTO), and the Intellectual
Property Office of Singapore (IPOS), based on the same or similar framework
as the PPH between the USPTO and JPO.
Following on these partnerships, the USPTO and the German Patent and
Trade Mark Office (DPMA) 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/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 applicant may request
accelerated examination at DPMA for the corresponding application filed
with DPMA as the OSF. The procedures and requirements for filing a request
with DPMA for participation in the PPH pilot program will be available on
April 27, 2009, from the DPMA Web site at:
http://www.dpma.de/english/patent/forms/index.html.
Where the USPTO is the OSF and the corresponding application filed with
DPMA 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. Note that the procedures for a petition to
make special under the accelerated examination program set forth in MPE
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
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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 April 27, 2009, for a period of
two years ending on April 27, 2011. The trial period may be extended if
necessary to adequately assess the feasibility of the PPH program. The
USPTO and DPMA 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 27, 2011 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
DPMA, 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 DPMA, 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 DPMA, 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):
- US application with single Paris Convention priority claim to a German
(DPMA) application
- US application with multiple Paris Convention priority claims to DPMA
applications
- Paris route and domestic priority
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- Paris route and divisional application
(1)(a)(ii):
- US application claims Paris Convention priority to a PCT application
* DO - Designated Office
(1)(b)(i):
- US application is a national stage of a PCT application which claims
Paris Convention priority to a DPMA application
- PCT Route
(1)(b)(ii):
- US application is a national stage of a PCT application which claims
Paris Convention priority to another PCT application
- Direct PCT and PCT Route
(1)(b)(iii):
- US application is a national stage of a PCT application without
priority claim
(1)(c)(i):
- US application is a 111(a) bypass of a PCT application which claims
Paris Convention priority to a DPMA application
(1)(c)(ii):
- US application is a 111(a) bypass of a PCT application which claims
Paris Convention priority to another PCT application
(1)(c)(iii):
- US application is a 111(a) bypass of a PCT application which contains
no priority claim
The DPMA application whose claims are determined to be allowable/
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patentable does not have to be the application for which priority is
claimed in the USPTO application (the basic application). The DPMA
application can be an application explicitly derived from the basic
application, e.g., a divisional application of the basic application. Note
that where the DPMA application that contains the allowable/patentable
claims is not the same application for which priority is claimed in the
U.S. application, applicant must identify the relationship between the DPMA
application that contains the allowable/patentable claims and the DPMA
priority application claimed in the U.S. application (e.g., DPMA
application X that contains the allowable/patentable claims is a divisional
application of DPMA application Y, which is the priority application
claimed in the U.S. application).
Provisional applications, plant applications, 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 DPMA application(s) have at least one claim that was determined by
the DPMA to be allowable/patentable (in a DPMA Office communication, e.g.,
"Prüfungsbescheid" or in a patent grant). Applicant must submit a copy of
the allowable/patentable claims from the DPMA application(s) along with an
English translation thereof and a statement that the English translation is
accurate if the claims are not in the English language. If the DPMA 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 or in the transmittal letter accompanying the request for
participation that no rejection has been made in the DPMA Office
communication regarding that claim, and therefore, the claim is deemed
allowable by the DPMA.
(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
to or be amended to sufficiently correspond to the allowable/patentable
claims in the DPMA application(s). Claims will be considered to sufficiently
correspond where, accounting for differences due to translations and 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/patentable claims in the DPMA
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/20DE) will be available from
the USPTO Web site at http://www.uspto.gov on April 27, 2009. 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 DPMA 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 if the office actions are not in the English
language. In addition, applicant must submit copies of any office actions
are relevant to patentability) from the DPMA application(s) issued after the
grant of the request for participation in the PPH pilot program in the USPTO
(especially where DPMA might have reversed a prior holding of allowability).
(7) Applicant must submit an information disclosure statement (IDS) listing
the documents cited by the DPMA examiner in the DPMA office action (unless
such an IDS has already been filed in the U.S. application). Applicant must
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submit copies of all the documents cited in the DPMA 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.uspto.gov/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. Applicant must fulfill all the conditions set forth above in
order for special status to be granted in the continuing application.
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 DPMA 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 DPMA 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 11.18. By complying with requirements B.(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
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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.
April 14, 2009 JOHN J. DOLL
Acting Under Secretary of Commerce for
Intellectual Property and
Acting Director of the
United States Patent and Trademark Office
[1342 OG 100]