| Patent Prosecution Highway |
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(213) Patent Prosecution Highway Pilot Program between the
United States Patent and Trademark Office and
European Patent 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 starting
January 4, 2008.
USPTO has also commenced separate PPH pilot programs with the United
Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual
Property Office (CIPO), the Korean Intellectual Property Office (KIPO), and
IP Australia (IPAU), based on the same framework as the PPH between the
USPTO and JPO.
Following on these partnerships, the USPTO and the European Patent
Office (EPO) have agreed to launch a PPH pilot program similar to the PPH
pilot programs noted above with the exception that PCT international
applications (including national stage applications filed under 35 U.S.C.
371) are excluded.
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 the EPO for the corresponding application filed
with the EPO as the OSF. The procedures and requirements for filing a
request with the EPO for participation in the PPH pilot program are
available from the EPO web site at: www.epo.org. Where the EPO is the OSF,
applicant may provide the EPO with the necessary documents for requesting
participation in the PPH pilot program, or request that the EPO 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 the EPO.
Where the USPTO is the OSF and the corresponding application filed with
the EPO 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
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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.
A. Trial Period for the PPH Pilot Program
The PPH pilot program will commence on September 29, 2008, for a period
of one year ending on September 29, 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 the EPO 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
29, 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 Paris Convention application validly
claiming priority under 35 U.S.C. 119(a) and 37 CFR 1.55 to one or more
applications filed in the EPO.
An example of U.S. applications that fall under requirement (1) is:
* EESR - Extended European Search Report
PCT international applications (including national stage applications
filed under 35 U.S.C. 371), 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 EPO application(s) have at least one claim that was determined
by the EPO to be allowable (either in an EPO Office action or in a positive
Extended European Search Report (EESR) if no EPO Office action has been
issued yet). Applicant must submit a copy of the allowable claims from the
EPO application(s). If the EPO 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 EPO Office action regarding that claim, and
therefore, the claim is deemed allowable by the EPO. If applicant is
relying on a positive EESR to establish that a particular claim is deemed
allowable by the EPO, applicant must explain in the request for
participation in the PPH pilot program or in the transmittal letter
accompanying the request for participation how the EESR establishes
allowability of that particular claim.
(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 EPO
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 EPO application(s).
(4) Examination of the U.S. application for which participation in the
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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/20EP) will be
available from the USPTO web site at http://www.uspto.gov on September 29,
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 EPO application(s) containing
the allowable claims that are the basis for the request. In addition,
applicant must submit copies of any Office actions (which are relevant to
patentability) from the EPO application(s) issued after the grant of the
request for participation in the PPH pilot program in the USPTO (especially
where EPO might have reversed a prior holding of allowability).
If applicant is relying on a positive EESR to establish that a particular
claim is deemed allowable by the EPO and no EPO Office action which is
relevant to patentability has been issued by the EPO, applicant must submit
a copy of the positive EESR. In addition, applicant must submit copies of
any Office actions (which are relevant to patentability) from the EPO
application(s) issued after the grant of the request for participation in
the PPH pilot program in the USPTO (especially where EPO might have
reversed a prior holding of allowability in the positive EESR).
(7) Applicant must submit an information disclosure statement (IDS)
listing the documents cited by the EPO examiner in the EPO Office action or
in the positive EESR (unless such an IDS has already been filed in the U.S.
application). Applicant must submit copies of all the documents cited in
the EPO Office action or in the positive EESR (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.
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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 EPO 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 claims in the EPO 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 (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.
September 22, 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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