| Patent Prosecution Highway |
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(217) Revised Requirements for Requesting Participation in the
Patent Prosecution Highway Pilot Program in the USPTO
(Between the USPTO and the UK IPO)
On September 4, 2007, the United States Patent and Trademark Office (USPTO)
commenced a Patent Prosecution Highway pilot program (PPH) with the United
Kingdom Intellectual Property Office (UK IPO), which was scheduled to last
for a period of one year ending on September 4, 2008, but extendible for an
additional year. A notice entitled "Patent Prosecution Highway Pilot
Program between the United States Patent and Trademark Office and the
United Kingdom Intellectual Property Office" was published on September 25,
2007 at 1322 Off. Gaz. Pat. Office 258 providing the details of the PPH
pilot program.
The USPTO and UK IPO recently agreed to modify the pilot program to (1)
permit certain applications based on PCT filings (where the PCT application
does not contain any priority claim) to qualify for participation in the
PPH pilot program, and (2) require that the request for participation in
the PPH pilot program and all the supporting documents be submitted to the
USPTO via EFS-Web. The September 25, 2007 notice required the PCT
application to claim priority to a UK application and required that all the
PPH documents be faxed to the Office of the Commissioner for Patents.
Effective January 28, 2008, the following U.S. applications may be eligible
to participate in the pilot program:
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 in the UK IPO, 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 in the UK IPO, 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 in the UK IPO 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 this requirement are:
 Top of Notices (217) December 27, 2011 |
US PATENT AND TRADEMARK OFFICE |
1373 CNOG 885 |
(a)(i):
(a)(ii):
* DO - Designated Office
(b)(i):
(b)(ii):
(b)(iii):
(c)(i):
(c)(ii):
(c)(iii):
Effective January 28, 2008, 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 as PPH.PET.652. 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. Any renewed
request for participation (where the initial request for participation has
been dismissed) must be submitted via EFS-Web and indexed accordingly as
noted above.
Please continue to direct inquiries on the PPH pilot program to Magdalen
Greenlief at 571-272-8800 or via e-mail addressed to
magdalen.greenlief@uspto.gov.
January 14, 2008 JOHN DOLL
Commissioner for Patents
[1327 OG 54]