Posted by Jeff Shieh on Thu, Sep 02, 2010 @ 03:59 PM
The USPTO and the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (ROSPATENT) have announced the creation of a Patent Prosecution Highway (PPH) pilot program. The program commenced yesterday and will be in effect for one year.
Like the other PPH programs currently in place, an applicant receiving a favorable ruling from one nation's patent office on at least one claim may request that a corresponding application filed with the other nation be fast tracked for examination. The USPTO requirements for participation in this program can be found here.
Further information on the PPH can be found in our other blog posts here.
Posted by Jeff Shieh on Wed, Aug 25, 2010 @ 01:16 PM
Dr. Michael Blaine Brooks, of the Law Office of Michael Blaine Brooks, delivered a presentation on “Advancing US Cases via the PCT-Patent Prosecution Highway” to the Ventura County (CA) Bar Association last week. He was kind enough to share the material with us and we are pleased to have him author an article for the foreign filing blog this week.
Two very helpful things were announced this summer by the USPTO: (1) as of May 25, 2010, the petition fee for the Patent Prosecution Highway (PPH) was waived, and (2) as of June 1, 2010, the PCT Patent Prosecution Highway (PCT-PPH) includes the Korean Intellectual Property Office (KIPO).
This is good news. Now, an International Search Report (ISR) and written opinion that finds one or more claims of a PCT "international" application patentable can be used to advance a US counterpart non-provisional application in the USPTO’s examination queue.
However, there are a couple of restrictions:
(a) the claims of the US non-provisional patent application must correspond to, or be narrower than, the claims found patentable in the PCT application.
(b) the PCT International Search Authority (ISA) must be the European Patent Office (EPO), KIPO, or the Japanese Patent Office (JPO).
Presently, KIPO is selected as the ISA in about 30% of PCT applications originating from the US. In addition, KIPO is the least expensive ISA available to US PCT applicants. Moreover, it is fully competent to search all classes of US statutory subject matter (in distinction to the EPO, which won’t search in classes such as those relating to business methods and certain types of software).
Unlike the USPTO and EPO (at times), KIPO also provides relatively timely ISRs. Applicants can expect a search report and written (patentability) opinion either: nine months from the filing of the PCT application without a Paris Convention priority document; or within about sixteen months of the PCT application's earliest Paris Convention priority date.
If only a subset of the PCT application’s claims are found patentable by the EPO, JPO, or KIPO as the ISA, the US practitioner may consider conforming a previously filed counterpart US application via a preliminary amendment before filing the PCT-PPH request. A PCT Chapter II demand could be filed with amended claims, but the international preliminary examination report for the PCT-PPH request may not be available until 28 months from the PCT application’s Paris Convention priority date.
The US practitioner should be mindful that "102(e)-like" references are not used in determining PCT patentability (although they may be specifically mentioned in the search report), and means-plus-function claims will be read more broadly by PCT examiners than those at the USPTO. So, while the PCT application extends prospective international patent rights and the PPH provides a process for advancing a corresponding US application, the PCT-PPH advancement process is not a full faith and credit process of US claim allowance. That is, a favorable ruling of patentability for at least one claim of the PCT application does not provide a basis for automatic allowance of the corresponding US case.
Michael Blaine Brooks, PhD, PE(EE), holds his JD from Pepperdine University School of Law and BS, MS & PhD degrees in engineering from UCLA. Dr. Brooks actively participates in furthering excellence in intellectual property practice as Adjunct Professor of Patent Law at Pepperdine, and a member of the Ventura County and the San Fernando Valley Bar Associations. He heads a private intellectual property law firm in the Greater Los Angeles area. (http://www.brooksiplaw.com/)
Click here to read other blog articles on the PPH.
Posted by Jeff Sweetman on Tue, Nov 17, 2009 @ 10:49 AM
As discussed here, a fairly serious limitation of existing Patent Prosecution Highway (PPH) programs is that PCT applications can't form the basis for a PPH accelerated examination request.
This has always seemed a slightly artificial restriction to me. Most national patent offices already re-use the results of their own PCT searches during post-national phase search and examination. The PPH lets them re-use the results of search and examination performed by other PPH offices. However, the way PPH programs have been structured to date has meant that similar work performed under the auspices of the PCT could not be re-used.
For example: until now, the PPH permitted the EPO to re-use USPTO search and examination results from a regular (non-PCT) US application. However, a USPTO (as PCT ISA) search performed by the same examiner on an identical application filed in the US via the PCT system could not be re-used.
However, the trilateral group of patent offices (Europe, Japan and the USA) has just agreed to address this key shortcoming of the existing Patent Prosecution Highway (PPH) program. Beginning in early 2010, the restriction on PCT search and examination results under the trilateral PPH program will be lifted.
At a time when funds are short and patent office queues are long (and getting longer), anything that helps applicants get high quality granted patents must be a good thing. Indeed, a number of our own clients have been surprised and disappointed to learn their applications couldn't be accelerated under the PPH program.
The devil may stil be in the details, but in principle this certainly looks like a substantial step in the right direction.
Photo credit: kla4067
Posted by Jeff Sweetman on Thu, Oct 29, 2009 @ 09:25 PM
Overshadowed by recent patent examination backlog discussions, a series of bilateral agreements, known as the Patent Prosecution Highway (PPH), has quietly been making progress on work-sharing between patent offices.
The PPH allows fast-tracking of an application in one country, based on the results of examination in another.
It's been argued by some that the PPH is undermining the development of PCT work-sharing schemes, by sidestepping political logjams at the PCT level.
However, if the PPH is successful, much of the procedural work for implementing work-sharing under the PCT will already have been developed, tested and proven in practice.
Perhaps as importantly, the PPH should also have the more subjective - and critical - effect of increasing trust between patent offices. A lack of trust in the work of other patent offices has been a significant problem with achieving consensus in relation to reliance on work done in preparing the ISR, for example.
Overall, if the PPH is successful, it might ironically have the effect of speeding up a belief in genuine work-sharing at the PCT level. The recent agreement to start allowing PCT national phase applications to be used under the PPH takes another step towards that long-term goal.
Photo credit: rjones0856