| Patent Prosecution Highway |
Referenced Items (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, 220, 221, 222, 223, 224, 225, 226, 227, 228, 229, 230, 231, 232, 233, 234, 235, 236, 237, 238, 239, 240, 241, 242, 243, 244, 245, 246) |
(231) Patent Prosecution Highway
Pilot Program between the
United States Patent and Trademark Office and the
National Board of Patents and Registration of Finland
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 commensed 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), the Intellectual
Property Office of Singapore (IPOS), and the German Patent and Trade Mark
Office (DPMA) based on the same or similar framework as the PPH between
the USPTO and JPO.
Following on these partnerships, the USPTO and the National Board of
Patents and Registration of Finland (NBPR) 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 NBPR for the corresponding application filed
with NBPR as the OSF. The procedures and requirements for filing a request
with NBPR for participation in the PPH pilot program will be available on
July 6, 2009, from the NBPR Web site at:
http://www.prh.fi/en/patentit/pph.html.
Where the USPTO is the OSF and the corresponding application filed with
NBPR 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 MPEP
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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
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 July 6, 2009, for a period of one
year ending on July 6, 2010. 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 NBPR 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 July 6, 2010 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 NBPR, 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 NBPR, 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 NBPR, 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 an
application filed in Finland
- US application with multiple Paris Convention priority claims to NBPR
applications
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- 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 NBPR 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 NBPR 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
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The NBPR application whose claims are determined to be allowable/
patentable does not have to be the application for which priority is
claimed in the USPTO application (the basic application). The NBPR
application can be an application explicitly derived from the basic
application, e.g., a divisional application of the basic application. Note
where the NBPR 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 NBPR
application that contains the allowable/patentable claims and the NBPR
priority application claimed in the U.S. application (e.g., NBPR
application X that contains the allowable/patentable claims is a divisional
application of NBPR 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 NBPR application(s) have at least one claim that was determined
by the NBPR to be allowable/patentable. Applicant must submit a copy of the
allowable/patentable claims from the NBPR 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 NBPR 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 NBPR Office action
regarding that claim, and therefore, the claim is deemed allowable by the
NBPR.
(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 NBPR 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 NBPR 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/20FI) will be
available from the USPTO Web site at http://www.uspto.gov on July 6, 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 NBPR 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 NBPR application(s) issued after
the grant of the request for participation in the PPH pilot program in the
USPTO (especially where NBPR might have reversed a prior holding of
allowability).
(7) Applicant must submit an information disclosure statement (IDS)
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listing the documents cited by the NBPR examiner in the NBPR 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 NBPR 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 NBPR 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 NBPR
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)
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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.
June 25, 2009 JOHN J. DOLL
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office
[1344 OG 165]