Important changes to Patent Prosecution Highway (PPH) practice
at the U.S. Patent and Trademark Office (USPTO) and other
intellectual property offices around the world took effect on
January 6, 2014. The world's five largest IP offices –
the USPTO, the European Patent Office (EPO), the Korean
Intellectual Property Office, the Japan Patent Office, and the
State Intellectual Property Office of the People's Republic of
China (collectively, the "IP5") – launched a new
PPH pilot program (referred to as the "IP5 PPH").
Simultaneously, and with the inclusion of three IP5 members,
thirteen intellectual property offices launched a similar pilot
program titled the "Global PPH" pilot program. The Global
PPH pilot program includes the national offices of the United
States, Japan, South Korea, Australia, Canada, Denmark, Finland,
Norway, Portugal, Russia, Spain, United Kingdom, and the Nordic
Patent Institute.
These changes signal the end of myriad existing bilateral PPH
programs between the IP5 nations and the thirteen Global PPH
nations, such as the EPO-USPTO PPH agreement that is set to expire
on January 28, 2014. The former bilateral PPH programs between the
IP5 and Global PPH nations will be incorporated into the IP5 and
Global PPH pilot programs. According to the USPTO, under the new
pilot programs, "any earlier, positive results by any of these
offices is now available as a basis for PPH at USPTO, so long as
the applications share a common earliest date and support the
claimed subject matter—be it PCT or national office
products."
PPH programs have long been lauded as avenues for reducing
inefficiencies in patent examination procedures. Theoretically, PPH
programs allow resource and work-sharing between offices, thereby
decreasing the amount of duplicate searching and examination
conducted at participating offices. Member offices utilize the
search and examination results of an IP5 patent office's
priority application to accelerate the review of the application.
That is, an applicant receiving a ruling from an IP5 office that at
least one claim in an application is patentable may request, under
the PPH, that the second IP5 member accelerate examination of the
corresponding claims. The general rules for participation in the
updated pilot programs have not yet been released by the USPTO but
will likely be similar to previous PPH programs and require that
priority is validly claimed, that at least one claim is allowed,
that the corresponding claim in the second application is
substantially similar to the allowed claim, and that examination
has not begun on the second application.
The new programs are intended to provide strategic opportunities
for patent filers by increasing PPH filing opportunities. The USPTO
has said that "[t]he strategic possibilities are countless for IP
owners!" Other benefits of the updated pilot programs to
patent practitioners come in the way of uniform standards,
guidelines, and forms. According to the USPTO, the pilot programs
"will have a single form and a common set of
guidelines for all of the major offices which are now engaged with
the USPTO in the PPH process." This should benefit
practitioners by providing "a common form and common expectations from nearly
all of the participating offices within this system."
Greater uniformity of process across participating offices could
create additional cost savings in the form of saved attorney
time.
In conclusion, patent owners should consider utilizing the PPH pilot programs as a method of reducing pendency time and also attorney and/or prosecution costs. While many patent filers are familiar with the PPH program in general, the new IP5 and Global PPH pilot programs simplify the process and could provide more strategic possibilities. Thus, new consideration should be given to utilizing the PPH programs in the U.S. and in other member nations.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.