| Patent Prosecution Highway |
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(208) Notice Regarding Full Implementation of
Patent Prosecution Highway Program between the
United States Patent and Trademark Office and the
Korean Intellectual Property Office
I. Background
The United States Patent and Trademark Office (USPTO) has conducted a
Patent Prosecution Highway (PPH) pilot program with the Korean Intellectual
Property Office (KIPO) for one year from January 28, 2008, to January 28,
2009. For a complete description of the PPH pilot program, see "Patent
Prosecution Highway Pilot Program between the United States Patent and
Trademark Office and the Korean Intellectual Property Office," published on
February 5, 2008, at 1327 OG 49 The results of the pilot program showed
that (1) applicants have been able to expeditiously obtain a patent in the
Office of second filing (OSF) at an early stage, by utilizing the petition
to make special procedures currently available in the OSF, based on claims
that have been allowed in the Office of first filing (OFF); (2) the OSF has
been able to reduce duplication of search efforts by exploiting the search
and examination results of the OFF to a maximum extent practicable; and (3)
the OSF has been able to reduce the examination workload since the scope of
the claims in the OSF application has been clarified through the OFf's
examination prosecution.
II. Full Implementation of the Patent Prosecution Highway Program
The USPTO and the KIPO agreed to fully implement the PPH program on a
permanent basis starting on January 29, 2009.
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 program. The procedures and
requirements for filing a request in the USPTO for participation in the PPH
program are set forth below.
A. Requirements for Requesting Participation in the PPH Program in the
USPTO
In order to be eligible to participate in the PPH 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 (may be utility model applications)
filed in the KIPO, 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
(may include utility model application) filed in the KIPO, 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
(may include a utility model application) filed in the KIPO, 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.
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Examples of U.S. applications that fall under requirement (1) are:
(1)(a)(i):
- US application with single Paris Convention priority claim to a Korean
(KR) application
- US application with multiple Paris Convention Priority claims to KR
applications
- Paris route and domestic priority
- 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 KR 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 KR application
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(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 KR application whose claims are determined to be allowable/patentable
does not have to be the application for which priority is claimed in the
U.S. application (the basic application). The KR application can be an
application explicitly derived from the basic application, e.g., a
divisional application of the basic application, a converted application
of the basic application or an application which claims domestic priority
to the basic application. Note that where the KR 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 KR application that contains the
allowable/patentable claims and the KR priority application claimed in the
U.S. application (e.g., KR application X that contains the
allowable/patentable claims, claims domestic priority to KR application Y,
which is the priority application claimed in the U.S. application).
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
program.
(2) The KR application(s) have at least one claim that was determined by
the KIPO to be allowable/patentable. Applicant must submit a copy of the
allowable/patentable claims from the KR application(s) along with an
English translation thereof and a statement that the English Translation is
accurate (if the claims were published in a language other than English).
(3) All the claims in each U.S. application for which a request for
participation in the PPH program is made must sufficiently correspond or be
amended to sufficiently correspond to the allowable/patentable claims in
the KR 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 KR
application(s).
(4) Examination of the U.S. application for which participation in the PPH
program is requested has not begun.
(5) Applicant must file a request for participation in the PPH program and
a petition to make the U.S. application special under the PPH program. A
sample request/petition form (PTO/SB/20KR) is available at the USPTO Web
site at http://www.uspto.gov/web/patents/pph/pph_kipo.html. 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, e.g., "Notice of Rejection," however, excluding
a "Decision to Grant a Patent") from each of the KR application(s)
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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). 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.
(7) Applicant must submit an information disclosure statement (IDS) listing
the documents cited by the KIPO examiner in the KIPO 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 KIPO 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 program and all the supporting
documents must be submitted to the USPTO via EFS-Web and indexed as
PPH.PET.652. Information regarding EFS-Web is available at http://
www.ustpo.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 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 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 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 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 program when these documents were previously filed
in the U.S. application.
B. Special Examining Procedures
Once the request for participation in the PPH 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 program must sufficiently correspond to one or
more allowable/patentable claims in the KR application(s). Applicant is
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required to submit a claims correspondence table along with the amendment
(see A.(3) above). If the amended or newly added claims do not
sufficiently correspond to the allowable/patentable claims in the KR
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 KR application(s) issued after the grant of the
request for participation in the PPH program (especially where the KIPO
might have reversed a prior holding of allowability) along with English
translations thereof and a statement that the English translation is
accurate.
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 A.(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 must still provide 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 571-272-8140, or at magdalen.greenlief@uspto.gov.
January 28, 2009 JOHN J. DOLL
Acting Under Secretary of
Commerce for Intellectual
Property and Acting
Director of the United States
Patent and Trademark Office
[1339 OG 155]