Top of Notices   (225)  December 25, 2012

US PATENT AND TRADEMARK OFFICE

Print This Notice 1385 CNOG  998

Patent Prosecution Highway

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Revised Requirements for Requesting Participation in the Patent Prosecution Highway Program in the United States Patent & Trademark Office (USPTO) (Between the USPTO and the Japan Patent Office (JPO))

On January 4, 2008, the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) implemented a Patent Prosecution Highway (PPH) program on a permanent basis. A notice entitled “Notice Regarding Full Implementation of Patent Prosecution Highway Program between the United States Patent and Trademark Office and the Japan Patent Office” was published on March 4, 2008, at 1328 Off. Gaz. Pat. Office 44 providing the details of the PPH permanent program.

I. The USPTO and JPO agreed at the November 2009 Trilateral Conference to revise the requirements for requesting participation in the PPH permanent program to permit applicants to submit a machine translation into the English language of the copy of the latest JPO office action just prior to the “Decision to Grant a Patent” (e.g., the latest “Notification of Reasons for Refusal”) from each of the JPO application(s) containing the allowable/patentable claims that are the basis for the PPH request. The machine translation into the English language must be one that is provided by the JPO. That is, the machine translation into the English language cannot be one that is provided by a commercial service. Where a machine translation into the English language of the copy of the latest JPO office action (obtained from the JPO) is submitted, it will not be necessary to include a statement that the English translation is accurate.

Note that the acceptance of the machine translation into the English language does not apply to the copy of all claims which were determined to be allowable/patentable by the JPO. Applicants must continue to submit an English translation of the JPO allowable/patentable claims along with a statement that the English translation is accurate.

Effective January 29, 2010, the USPTO will start accepting machine translation into the English language of the copy of the latest JPO office action as indicated above.

II. The USPTO and JPO also agreed at the November 2009 Trilateral conference to revise the definition of “sufficient correspondence” of the claims on a two-year trial period basis. Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims in the U.S. application are of the same or similar scope as the allowable/patentable claims in the Japanese application, or the claims in the U.S. application are narrower in scope than the allowable/patentable claims in the Japanese application. The additional limitation that makes the claims in the U.S. application narrower in scope than the allowable/patentable claims in the Japanese application must have support in the written description of the U.S. application and the additional limitation must be presented in dependent form. Such dependent claims with the additional limitations must be clearly identified in the claims correspondence table.

Effective January 29, 2010, for a period of two years ending on January 28, 2012, the USPTO will accept claims written in dependent form in the U.S. application which are narrower in scope than the allowable/patentable claims in the Japanese application. The two-year trial period may be extended for up to an additional year if necessary to adequately assess the feasibility of permitting such dependent claims in the U.S. application. The USPTO will evaluate the results to determine whether or not this revised definition of “sufficient correspondence” of the claims should be fully implemented after the trial period. The USPTO may also terminate the trial period early if the number of claims in these PPH applications exceeds a manageable level, or for any other reasons. Notice will be published if the two-year trial period will be terminated before January 28, 2012.

Please continue to direct inquiries on the PPH program to Magdalen Greenlief at 571-272-8800, or via e-mail addressed to magdalen.greenlief@uspto.gov.

	DAVID J. KAPPOS
	Under Secretary of Commerce for Intellectual Property and
	Director of the United States Patent and Trademark Office

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