| Patent Prosecution Highway |
Referenced Items (183, 184, 185, 186, 187, 188, 189, 190, 191, 192, 193, 194, 195, 196, 197, 198) |
(191) Implementation of the Global and IP5 Patent Prosecution
Highway (PPH) Pilot Programs with Participating Offices
I. Background
Beginning in July 2006, the United States Patent and Trademark Office
(USPTO) has partnered with several other offices in Patent Prosecution
Highway (PPH) programs. The PPH enables an applicant who receives a
positive ruling on patent claims from one participating office to request
accelerated prosecution of corresponding claims in another participating
office, which allows the applicant to obtain a patentability decision in
the second office more quickly. Furthermore, the PPH promotes patent
application processing efficiency by allowing the examiner in the office
of later examination (OLE) to reuse the search and examination results
from the office of earlier examination (OEE), thereby reducing workload
and duplication of effort.
Since its inception, various enhancements to the original PPH program
have been introduced. For instance, a requirement that the OEE be the
office of first filing was eliminated under the "MOTTAINAI" program. See,
for example, the notice available at
http://www.uspto.gov/web/offices/com/sol/og/2011/week33/TOC.htm#ref16.
Also, the scope of eligible search and examination results was expanded
to include Patent Cooperation Treaty (PCT) work products under the PCT-PPH
program. See, for example, the notice available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref17.
Additionally, the requirements for requesting participation in the PPH
were simplified under the PPH 2.0 program. See, for example, the notice
available at
http://www.uspto.gov/web/offices/com/sol/og/2012/week10/TOC.htm#ref15.
As the work sharing benefits provided by the PPH have become apparent,
participation in the PPH program in its various forms has grown rapidly.
However, because the above-described modifications to the PPH program have
not been universally implemented by the different participating offices,
the administration of multiple PPH programs, each having particular
requirements, has become increasingly cumbersome. Recognizing the need and
opportunity for greater efficiency, the USPTO and several other offices
seek to consolidate and replace existing PPH programs, with the goal of
streamlining the PPH process for both offices and applicants. To this end,
the USPTO and other offices have established the Global PPH pilot program
and the IP5 PPH pilot program.
The Global PPH and IP5 PPH pilot programs are running concurrently and
are substantially identical, differing only with regard to their respective
participating offices. The USPTO is participating in both the Global PPH
pilot program and the IP5 PPH pilot program. A list of the other offices
currently participating in the Global PPH pilot program is available at
http://www.uspto.gov/patents/init_events/pph/. The European Patent Office
(EPO), Japan Patent Office (JPO), Korean Intellectual Property Office
(KIPO), and State Intellectual Property Office of the People's Republic of
China (SIPO) are participating in the IP5 PPH pilot program.
Because the USPTO has elected to participate in both the Global PPH
pilot program and the IP5 PPH pilot program, a PPH request may be filed in
the USPTO based on the work product of any office participating in either
pilot program. Furthermore, because the respective requirements for the
Global PPH and IP5 PPH pilot programs are equivalent, USPTO applicants
need not specify which pilot program is being utilized. For USPTO
applications, the Global PPH and IP5 PPH pilot programs supersede any prior
PPH program between the USPTO and each Global PPH and IP5 PPH participating
office. Any existing PPH programs between the USPTO and offices that are
not participating in either the Global PPH pilot program or the IP5 PPH
pilot program remain in effect.
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II. Trial Period for the Global PPH and IP5 PPH Pilot Programs
The Global PPH and IP5 PPH pilot programs commenced on January 6, 2014.
The Global PPH pilot program will run for a period of one year ending on
January 5, 2015. The IP5 PPH pilot program will run for a period of three
years ending on January 5, 2017. The trial period for each pilot program
may be extended if necessary to adequately assess the feasibility of the
PPH program. The participating offices will continually evaluate the
results of the Global PPH and IP5 PPH pilot programs to determine whether
and how the programs should be fully implemented. The offices also may
terminate either the Global PPH pilot program or the IP5 PPH pilot program
early if the volume of participation exceeds a manageable level, or for any
other reason. Notice will be published if either the Global PPH pilot
program or the IP5 PPH pilot program will be terminated.
III. Requirements for Requesting Participation in the Global PPH or IP5 PPH
("Global/IP5 PPH") Pilot Program in the USPTO
A. Eligibility
In order to be eligible to participate in the Global/IP5 PPH pilot
program at the USPTO, the following requirements must be met:
(1) The U.S. application for which participation in the Global/IP5 PPH
pilot program is requested must have the same earliest date, whether this
is the priority date or filing date, as that of a corresponding national or
regional application filed with another Global/IP5 PPH participating
office, or a corresponding PCT international application for which one of
the Global/IP5 PPH participating offices was the International Searching
Authority (ISA) or the International Preliminary Examining Authority
(IPEA).
(2) The corresponding application has at least one claim indicated by
the OEE in its capacity as a national or regional Office, ISA, or IPEA to
be allowable/patentable. A claim determined as novel, inventive, and
industrially applicable by the ISA or IPEA has the meaning of
allowable/patentable for the purposes of this program.
(3) All claims in the U.S. application for which participation in the
Global/IP5 PPH pilot program is requested must sufficiently correspond to
the allowable/patentable claims in the corresponding OEE application. A
claim is considered to sufficiently correspond where, accounting for
differences due to claim format requirements, the claim is of the same or
similar scope as an allowable/patentable claim in the corresponding OEE
application. A claim in the U.S. application that is narrower in scope than
the claims indicated as allowable/patentable in the OEE application will
sufficiently correspond if presented as a claim dependent upon a claim
that is of the same or similar scope as a claim indicated as
allowable/patentable in the OEE application. In this regard, a claim that
is narrower in scope occurs when an OEE claim is amended to be further
limited by an additional feature that is supported by the written
description of the U.S. application. Additionally, a claim in the U.S.
application that introduces a new/different category of claims than those
indicated to be allowable/patentable by the OEE is not considered to
sufficiently correspond. For example, where the OEE application contains
only claims relating 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 OEE application.
(4) Substantive examination of the U.S. application for which
participation in the Global/IP5 PPH pilot program is requested has not
begun.
B. Required Documents
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For participation in the Global/IP5 PPH pilot program at the USPTO, the
applicant must submit:
(1) A request for participation in the Global/IP5 PPH pilot 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 request form is available from the USPTO Web site at
http://www.uspto.gov/patents/init_events/pph/. 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).
(2) A claims correspondence table in English, indicating how and
certifying that all the claims in the U.S. application correspond to
allowable/patentable claims in the OEE application.
(3) 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") in
the OEE national/regional application, along with an English translation
thereof, if applicable, or the latest work product in the international
phase of the OEE PCT application (e.g., the Written Opinion of the ISA or,
where a demand under PCT Chapter II has been filed, the Written Opinion of
the IPEA or the International Preliminary Examination Report), along with
an English translation thereof, if applicable. Note that if the office
action or PCT work product is already present in the U.S. application or
is available via the Dossier Access System Web site at
http://www.jpo.go.jp/ppph-portal/filewrapper.htm or the PATENTSCOPE system
of the World Intellectual Property Organization (WIPO), the applicant must
identify the document but need not supply a copy thereof.
(4) An information disclosure statement (IDS) listing the documents
cited in the office action or PCT work product submitted under item
III.B.(3) above along with copies of all documents except U.S. patents and
U.S. patent application publications. Note that any IDS or document copies
submitted in the U.S. application prior to the Global/IP5 PPH request need
not be resubmitted.
The above-listed documents must be submitted via EFS-Web and indexed
with the document description "Petition to make special under the Patent
Pros Hwy," except that any preliminary amendment or IDS submitted with the
PPH request must be separately indexed as a preliminary amendment or an
IDS, respectively.
IV. Special Examining Procedures
Where the request for participation in the Global/IP5 PPH pilot program
and special status is 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 Global/IP5 PPH pilot
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. Note that action on the application by the USPTO
will NOT be suspended (37 CFR 1.103) awaiting 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.
Although a request for participation in the Global/IP5 PPH pilot program
and special status granted in an application carries over to a request for
continued examination (RCE) of the application, a request for participation
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in the Global/IP5 PPH pilot 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 a continuing application.
Any claims amended or added after the grant of the request for
participation in the Global/IP5 PPH pilot program must sufficiently
correspond to one or more allowable/patentable claims in the OEE
application. 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 OEE application. If
the certification statement is omitted, the amendment will not be entered
and will be treated as a non-responsive reply.
The Global/IP5 PPH pilot program does not absolve applicants of all
their duties under 37 CFR 1.56 and 37 CFR 11.18. By complying with
requirements III.B.(3) and (4) identified above, the applicant would be
considered to have complied with the duty to bring to the attention of the
USPTO any material prior art cited in corresponding foreign applications
(see MPEP § 2001.06(a)). The applicant still has a duty of candor and good
faith, including providing to the USPTO other information known 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 10, 2014 MICHELLE K. LEE
Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office
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