| 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) |
(242) Patent Prosecution Highway Pilot Program between the
United States Patent and Trademark Office and the
Korean Intellectual Property 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 plans 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, we can reduce
duplication of efforts and decrease workload.
Since the beginning of July 2006, the USPTO has partnered with the Japan
Patent Office (JPO) on a Patent Prosecution Highway pilot program (PPH).
The PPH pilot program 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 pilot program
also permits each office to benefit from the work previously done by the
other office, in turn reducing workload and improving patent quality. The
USPTO and the JPO agreed to fully implement the PPH program starting
January 28, 2008.
USPTO has also commenced a PPH pilot program with the United Kingdom
Intellectual Property Office on September 4, 2007, based on the same
framework as the PPH pilot program between the USPTO and JPO.
The USPTO had discussions with the Korean Intellectual Property Office
(KIPO) to launch a PPH pilot program similar to the PPH pilot programs
between the USPTO and JPO and between the USPTO and UK IPO. USPTO and KIPO
agreed that consistency between PPH pilot programs should be maintained to
the extent possible, to avoid creating burdens on applicants and offices,
and to ensure maximum work-sharing potential.
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 U.S. applicant may likewise
request accelerated examination in the KIPO for the corresponding
application filed in the KIPO as the OSF. The procedures and requirements
for filing a request to the KIPO for participation in the PPH pilot program
are available from the KIPO web site at: http://www.kipo.go.kr/kpo2/user.
tdf?a=user.english.html.HtmlApp&c=60622&catmenu=ek60600. Where the KIPO is
the OSF, the KIPO will access 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 would have to provide the necessary copies to the KIPO. In the
event that the KIPO requests a copy of the necessary documents from the
USPTO, the USPTO would not provide such copies to the KIPO unless
authorization from the applicant is of record in the U.S. application.
Where the USPTO is the OSF and the corresponding application filed in the
KIPO 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
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make special under the accelerated examination program set forth in MPEP
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 January 28, 2008, for a period of
one year ending on January 28, 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 KIPO 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 January 28, 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) 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 (may include utility model applications)
filed in the KIPO, 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
(may include a utility model application) filed in the KIPO, 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
(may include a utility model application) filed in the KIPO, 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):
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(1)(a)(ii):
* DO - Designated Office
(1)(b)(i):
(1)(b)(ii):
(1)(b)(iii):
(1)(c)(i):
(1)(c)(ii):
(1)(c)(iii):
The KIPO 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 KIPO
application can be an application explicitly derived from the basic
application, e.g., a divisional application of the basic application, a
converted application of the basic application or an application which
claims domestic priority to the basic application. Note that where the KIPO
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 KIPO application that
contains the allowable/patentable claims and the KIPO priority application
claimed in the U.S. application (e.g., KIPO application X that contains the
allowable/patentable claims, claims domestic priority to KIPO application
Y, which is the priority application claimed in the U.S. application).
Provisional applications, plant and design applications, reissue
applications, reexamination proceedings, and applications subject to a
secrecy order are excluded.
(2) The KIPO application(s) have at least one claim that was determined by
the KIPO to be allowable/patentable. Applicant must submit a copy of the
allowable/patentable claims from the KIPO application(s) along with an
English translation thereof and a statement that the English translation is
accurate (if the claims were published in a language other than English).
(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/patentable claims
in the KIPO 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 KIPO
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/20KR) is available
from the USPTO web site at http://www.uspto.gov. Applicants are encouraged
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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, i.e., "Notification of Reason for Refusal" and
"Decision of Refusal," however, excluding a "Decision to Grant a Patent")
from each of the KIPO 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). It will
not be necessary for applicant to submit a copy of the "Decision to Grant a
Patent," an English translation of the "Decision to Grant a Patent" and a
statement that the translation is accurate.
(7) Applicant must submit an information disclosure statement (IDS) listing
the documents cited by the KIPO examiner in the KIPO 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 KIPO 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 be
indexed as PPH.PET.652. 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. Continuing applications must separately fulfill the conditions
set forth above.
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
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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 KIPO 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 KIPO
application(s), the amendment will not be entered and will be treated as a
non-responsive reply. Applicant must also submit copies of any office
actions from each of the KIPO application(s) issued after the grant of the
request for participation in the PPH pilot program (especially where the
KIPO might have reversed a prior holding of allowability).
The PPH program does not absolve applicants of all their duties under 37
CFR 1.56 and 37 CFR 10.18. 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.
January 14, 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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