inovia's Foreign Filing Blog

At last, the PCT sets out on the Patent Prosecution Highway...

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

"First to File" – Already a Practical Reality for Many US Applicants?

The proposed change to "first to file" in the USA is serious, fundamental, and deserves the level of scrutiny it's presently receiving in many forums.

Indeed, the first blog post by David Kappos as USPTO Director commented specifically on this issue, showing he appreciates its importance. (Poor guy, he then got quickly criticized on a variety of other blogs...)

However, we believe the storm generated by this proposal is a distraction for many applicants, and here's why: in practical terms, anyone intending to file overseas (whether via direct filings or the PCT) must already behave as if they are operating under a "first to file" system.

"First to file" is the basis for virtually every other country's patent system. Moreover, most countries apply an absolute novelty standard, with no grace period. As such, to obtain the benefit of an early filing date for a PCT or foreign application under the Paris Convention, it is necessary to file an early application in the USA.

We suspect the "first to file" storm will thunder on for some time. In the meantime, US applicants planning to file overseas should consider whether "first to file" is already a practical reality for them.

FREE Upcoming PCT Seminars by WIPO

WIPO is planning two free seminars next week - in Baltimore on Tuesday, Nov 10th and in Las Vegas on Friday, Nov. 13th.  Visit the WIPO events page for details and registration.