| Patent Prosecution Highway |
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(237) Revised Requirements for Requesting Participation in the
Patent Prosecution Highway Pilot Program in the USPTO
(Between the USPTO and the EPO)
On September 29, 2008, the United States Patent and Trademark Office
(USPTO) commenced a Patent Prosecution Highway pilot program (PPH) with the
European Patent Office (EPO), which was scheduled to last for a period of
one year ending on September 29, 2009, but extendible for an additional
year. A notice entitled "Patent Prosecution Highway Pilot Program between
the United States Patent and Trademark Office and European Patent Office"
was published on October 21, 2008 at 1335 Off. Gaz. Pat. Office 196
providing the details of the PPH pilot program.
In view of suggestions recently received from our users, the USPTO has
decided to modify the requirements for requesting participation in the PPH
pilot program in the USPTO to permit certain applications based on PCT
filings to qualify for participation in the PPH pilot program.
Effective December 22, 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 EPO, 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 EPO, 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 EPO 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:
(a)(i):
- US application with single Paris Convention priority claim to an EP
application
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US PATENT AND TRADEMARK OFFICE |
1385 CNOG 1030 |
*Extended European Search Report
- US application with multiple Paris Convention priority claims to EP
applications
- Paris route and domestic priority
- Paris route and divisional application
(a)(ii):
- US application claims Paris Convention priority to a PCT application
* DO - Designated Office
(b)(i):
- US application is a national stage of a PCT application which claims
Paris Convention to an EP application
- PCT Route
(b)(ii):
- US application is a national stage of a PCT application which claims
Paris Convention to another PCT application
- Direct PCT and PCT Route
(b)(iii):
- US application is a national stage of a PCT application without priority
claim
(c)(i):
- US application is a 111(a) bypass of a PCT application which claims Paris
Convention priority to an EP application
(c)(ii):
- US application is a 111(a) bypass of a PCT application which claims Paris
| Top of Notices (237) December 25, 2012 |
US PATENT AND TRADEMARK OFFICE |
1385 CNOG 1031 |
Convention priority to another PCT application
(c)(iii):
- US application is a 111(a) bypass of a PCT application which contains no
priority claim
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.
December 10, 2008 MARGARET A. FOCARINO
Acting Commissioner for Patents
[1338 OG 48]