Patent and Trademark Office Consolidated Notices December 29, 2015 1421 Item cons189

Top of Notices (189) December 29, 2015

US PATENT AND TRADEMARK OFFICE

Print This Notice 1421 CNOG 731

Patent Prosecution Highway

Referenced Items (181, 182, 183, 184, 185, 186, 187, 188, 189, 190, 191, 192, 193, 194, 195, 196, 197, 198)

(189)

Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with the Nicaraguan Registry of Intellectual Property

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 Patent Prosecution Highway (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.

On January 29, 2012, the USPTO implemented PPH 2.0 with respect to the seven MOTTAINAI participating offices along with the European Patent Office (EPO) in order to further enhance the PPH program and to encourage greater usage of, and participation in, the PPH program. On January 29, 2013, the USPTO implemented PPH 2.0 with the Korean Intellectual Property Office (KIPO), the Intellectual Property Office of the Philippines (IPOPH), and the Portugal National Institute of Industrial Property

(INPI-PT). On April 27, 2013, the USPTO implemented PPH 2.0 with the German Patent and Trade Mark Office (DPMA). On June 3, 2013, the USPTO implemented PPH 2.0 with the Danish Patent and Trademark Office (DKPTO). PPH 2.0 simplifies 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.

Following discussions between the USPTO and the Nicaraguan Registry of Intellectual Property (NRIP), the USPTO has implemented PPH 2.0 with respect to the NRIP.

II. Trial Period for the PPH 2.0 Program

The PPH 2.0 program commenced with respect to the NRIP on September 5, 2013, and will run indefinitely. The USPTO and the NRIP will evaluate the results of the PPH 2.0 program to determine whether and how the program should be fully implemented. The offices may also terminate the PPH 2.0 program 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 with respect to the NRIP. As of September 5, 2013, the PPH 2.0 participating offices are IPAU, CIPO, DKPTO, EPO, NBPR, DPMA, JPO, KIPO, NRIP, IPOPH, INPI-PT, ROSPATENT, SPTO and UKIPO with respect to applications filed in the USPTO.

III. 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 the PPH 2.0 participating office 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 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 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). A PPH request form is available from the USPTO Web site at http://www.uspto.gov/forms/. 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 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/patents/process/file/efs/index.jsp. 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) 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 (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 taken up for examination 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 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 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.

September 12, 2013	TERESA STANEK REA
	Deputy Under Secretary of Commerce for Intellectual Property and
	Deputy Director of the United States Patent and Trademark Office