| Patent Prosecution Highway |
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(206) Revised Requirements for the
Patent Prosecution Highway (PPH) Program to
Implement PPH 2.0 with Participating Offices
I. Background
Since July 15, 2011, the United States Patent and Trademark Office
(USPTO) and seven other offices (i.e., IP Australia (IPAU), Canada (CIPO),
Finland (NBPR), Japan (JPO), Russia (ROSPATENT), Spain (SPTO) and United
Kingdom (UKIPO)) have participated in an enhanced PPH pilot program
called "MOTTAINAI". Under MOTTAINAI, participation in the PPH may be
requested on the basis of search and examination results from any patent
family application from any participating office, regardless of whether
the participating office was the office of first filing. To implement
the MOTTAINAI pilot, the USPTO revised its PPH requirements. See for
example the notice available at
http://www.uspto.gov/web/offices/com/sol/og/2011/week33/TOC.htm#ref13.
In order to further enhance the PPH program and to encourage greater
usage of, and participation in, the PPH program, the USPTO and the
above-identified MOTTAINAI participating offices, along with the European
Patent Office (EPO), have agreed to implement PPH 2.0 by simplifying the
PPH requirements and procedures in a consolidated and user-friendly
framework, while at the same time ensuring that work sharing benefits to
the offices are not diminished. The revised requirements for PPH 2.0 and
the trial period are set forth below and supersede the PPH notices to
implement the MOTTAINAI pilot programs between the USPTO and the seven
MOTTAINAI participating offices. The PCT-PPH pilot program is not affected
by the current notice and remains available to applicants under the
existing guidelines. See, for example, the notice available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref17.
II. Trial Period for the PPH 2.0 Program
The PPH 2.0 program commenced on January 29, 2012, and will run for a
period of one year ending on January 28, 2013. The PPH 2.0 participating
offices are IPAU, CIPO, EPO, NBPR, JPO, ROSPATENT, SPTO and UKIPO. The
revised requirements will apply to PPH requests filed in the USPTO on or
after January 29, 2012, based on claims that have been determined allowable
by one of the PPH 2.0 participating offices in a corresponding application
filed in that office. The trial period may be extended for up to an
additional year if necessary to adequately assess the feasibility of the
PPH 2.0 program. The USPTO and the PPH 2.0 participating offices will
evaluate the results of the PPH 2.0 program to determine whether and how
the program should be implemented after the trial period. The offices may
also terminate the PPH 2.0 program early if the volume of participation
exceeds a manageable level, or for any other reason. Notice will be
published if the PPH 2.0 program will be terminated before the January 28,
2013 date.
III. Revised Requirements for Requesting Participation in the PPH 2.0
Program in the USPTO
In order to be eligible to participate in the PPH 2.0 program in the
USPTO, the following conditions must be met:
(1) At least one claim was determined by one of the PPH 2.0
participating offices to be allowable/patentable. The applicant will no
longer need to submit a copy of the allowed claims from the application
filed in the PPH 2.0 participating office or any English translation
thereof.
(2) The U.S. application for which participation in the PPH 2.0 program
is requested and the corresponding application filed in the PPH 2.0
participating office (with the allowable/patentable claim(s)) must have the
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same priority/filing date. In particular, the U.S. application (including
national stage entry of a PCT application and 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):
Case I - is an application that validly claims priority under 35
U.S.C. § 119(a) and 37 CFR 1.55 to one or more applications filed
with the PPH 2.0 participating office (examples are provided in the
ANNEX, Figures A, B, C and D),
or
Case II - is an application which is the basis of a valid priority
claim under the Paris Convention for the application filed in the
PPH 2.0 participating office (examples are provided in the ANNEX,
Figures E, F and G),
or
Case III - is an application which shares a common priority document
with the application filed in the PPH 2.0 participating office
(examples are provided in the ANNEX, Figures H, I, J, K, L, M and N),
or
Case IV - and the application filed in the PPH 2.0 participating
office are derived from/related to a PCT application having no
priority claim (example is provided in the ANNEX, Figure O).
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 2.0 program.
(3) All claims on file, as originally filed or as amended, for
examination under the PPH 2.0 program in the U.S. application must
sufficiently correspond to one or more of those claims indicated as
allowable in the application filed in the PPH 2.0 participating office. A
claim is considered to "sufficiently correspond" where, accounting for
differences due to translations and claim format, the claim in the U.S.
application is of the same or similar scope as a claim indicated as
allowable in the application filed in the PPH 2.0 participating office.
A claim in the U.S. application which is narrower in scope than the claims
indicated as allowable in the application filed in the PPH 2.0
participating office will also sufficiently correspond if presented as a
claim dependent upon a claim which is of the same or similar scope as a
claim indicated as allowable in the application filed in the PPH 2.0
participating office. The additional limitation that makes the claim in
the U.S. application narrower in scope than the allowable/patentable claims
in the application filed in the PPH 2.0 participating office must have
support in the written description of the U.S. application.
A claim in the U.S. application which introduces a new/different
category of claims to those claims indicated as allowable in the
application filed in the PPH 2.0 participating office is not considered to
sufficiently correspond. For example, if the only allowable/patentable
claims in the application filed in the PPH 2.0 participating office are
claims to a process of manufacturing a product, then any product claims in
the U.S. application are not considered to sufficiently correspond, even if
the product claims are dependent on process claims which sufficiently
correspond to allowable/patentable claims in the application filed in the
PPH 2.0 participating office.
The applicant is 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
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the application(s) filed in the PPH 2.0 participating office. Any
dependent claims with additional limitations must be clearly identified in
the claims correspondence table.
(4) Examination of the U.S. application for which participation in the
PPH 2.0 program is requested has not begun.
(5) The applicant must file a request for participation in the PPH 2.0
program and a request that the U.S. application be advanced out of turn for
examination by order of the Director to expedite the business of the Office
under 37 CFR 1.102(a). Revised PPH request forms are available from the
USPTO Web site at http://www.uspto.gov. Applicants are encouraged to use
the USPTO request form. A petition fee under 37 CFR 1.17(h) is NOT
required. See Notice Regarding the Elimination of the Fee for Petitions To
Make Special Filed Under the Patent Prosecution Highway (PPH) Programs.
75 Fed. Reg. 29312 (May 25, 2010).
(6) The applicant must submit a copy of the office action issued just
prior to the "Decision to Grant a Patent" (e.g., the latest "Notification
of Reasons for Refusal") from each of the application(s) filed in the PPH
2.0 participating office containing the allowable/patentable claims that
form the basis for the request, along with an English translation thereof.
The English translation may be a machine translation. The applicant will
no longer need to provide a statement that the English translation is
accurate if the office actions are not in the English language.
It will not be necessary for the applicant to submit a copy of the
"Decision to Grant a Patent" and an English translation thereof. If the
application filed in the PPH 2.0 participating office is a first action
allowance, i.e., there is no office action just prior to the "Decision to
Grant a Patent," then the applicant should indicate on the request form
that no office action from the application filed in the PPH 2.0
participating office is submitted since the application was a first action
allowance.
If the copy of the office action (along with an English translation
thereof if the office action is not in the English language) from the
application filed in the PPH 2.0 participating office is available via the
dossier access system, instead of submitting a copy of the office action,
the applicant may request that the USPTO obtain such a copy of the office
action (along with an English translation thereof if the office action is
not in the English language) via the dossier access system. If the USPTO
is not able to obtain a copy of the office action (along with an English
translation thereof if the office action is not in the English language)
via the dossier access system, the applicant will be notified and given an
opportunity to submit a copy of the office action (along with an English
translation thereof if the office action is not in the English language)
from the application filed in the PPH 2.0 participating office. The
English translation may be a machine translation.
If the USPTO finds the machine translation (submitted by the applicant
or obtained by the USPTO via the dossier access system) is of such poor
quality that it is difficult to understand, the applicant may be required
by the USPTO to submit a manual translation into the English language of
the office action from the application filed in the PPH 2.0 participating
office.
The applicant must submit copies of any office actions (which are
relevant to patentability) from the application(s) filed in the PPH 2.0
participating office issued after the grant of the request for
participation in the PPH 2.0 program in the USPTO (especially where the
PPH 2.0 participating office might have reversed a prior holding of
allowability).
(7) The applicant must submit an information disclosure statement (IDS)
listing the documents cited in the office action of the PPH 2.0
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participating office (unless such an IDS has already been filed in the U.S.
application). The applicant must submit copies of all the documents cited
in the office action of the PPH 2.0 participating office (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 2.0 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 amendment or IDS
submitted with the PPH 2.0 documents must be separately indexed as a
preliminary amendment or an IDS, respectively.
Where the request for participation in the PPH 2.0 program and special
status are granted, the 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 2.0 program does not meet all the
requirements set forth above, the applicant will be notified and the
defects in the request will be identified. The 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 USPTO 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 after the 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, the applicant will
be notified and the U.S. application will be advanced out of turn for
examination. If the request is not perfected, the applicant will be
notified and the application will await action in its regular turn.
(8) Although a request for participation in the PPH 2.0 program and
special status granted in an application carries over to a request for
continued examination (RCE) of the application, a request for participation
in the PPH 2.0 program and special status granted in a parent application
will not carry over to a continuing application. The 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 2.0 program, it will not be necessary for the
applicant to resubmit these documents with the request for participation.
The applicant may simply refer to these documents and indicate in the
request for participation in the PPH 2.0 program when these documents were
previously filed in the U.S. application.
IV. Special Examining Procedures
Once the request for participation in the PPH 2.0 program and special
status have been granted to the U.S. application, the U.S. application will
be advanced out of turn for examination.
Any claims amended or added after the grant of the request for
participation in the PPH 2.0 program must sufficiently correspond to one or
more allowable/patentable claims in the application(s) filed in the PPH 2.0
participating office. The applicant is required to submit, along with the
amendment, a statement certifying that the amended or newly added claims
sufficiently correspond to the allowable/patentable claims in the
application(s) filed in the PPH 2.0 participating office. If the
certification statement is omitted, the amendment will not be entered and
will be treated as a non-responsive reply.
The PPH 2.0 program does not absolve applicants of all their duties
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under 37 CFR 1.56 and 37 CFR 11.18. By complying with requirements III.(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 Bryan Lin,
Office of PCT Legal Administration at 571-272-3303, or via e-mail addressed
to bryan.lin@uspto.gov.
Specific questions about the Patent Prosecution Highway should be
directed to the Office of Petitions at 571-272-3282, or via e-mail
addressed to PPHfeedback@uspto.gov.
February 11, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1376 OG 45]