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|  Patent Prosecution Highway. This United States Patent and Trademark office has
established a program
to officially
give credence to the search work and patentability findings done on patent
applications by the ---
- Japan
Patent Office, effective
January 4, 2008;
- United
Kingdom Intellectual Property Office, effective until further
notice;
- Korean
Intellectual Property Office (KIPO), effective until further
notice;
- Canadian
Intellectual Property Office (CIPO), effective until 28 January
2011;
- Intellectual
Property Office of Australia , in a trial program until 01 April
2009 (no announcement yet on possible 1 year extension);
- European
Patent Office, in a
pilot program until 29 September 2009;
- Danish
Patent and Trademark Office (DKPTO), in a trial program until 3
November 2009.
- German
Patent and Trademark Office (DPMA), in a
trial program until 27 April 2011.
- Finland
National Board of Patents and Registration (NBPR), in a trial period until 06 July 2010.
- Hungarian Patent Office in a trial period starting on July 1, 2010, and continue for one year.
If any of these patent offices issues a finding that a claim in a
patent application is patentable, then an applicant may request that the
United States Patent and Trademark Office fast track the examination of
the corresponding claim in a corresponding application.
These other nation patent offices will do the same with respect to U.S.
patentability determinations.
Essentially, the Patent Prosecution Highway will leverage fast-track
patent examination procedures already available in these offices to allow
applicants to obtain corresponding patents faster and more efficiently.
Applicable to National
Applications. The program applies to PCT
national
stage applications filed under 35 U.S.C. 371 claiming priority to an
earlier national application. The program does NOT apply to provisional
applications, plant
and design
applications, reissue applications and reexamination
proceedings. For the European Patent Office, the program will not apply to
PCT international applications (including national stage applications
filed under 35 U.S.C. 371).
PCT Pilot PPH. The European Patent
Office, The Korean
Intellectual Property Office, and the Japan Patent Office and the United
States Patent and Trademark Office recently agreed to expand the existing set
of bilateral Patent Prosecution Highway (PPH) work sharing arrangements
by starting a PCT/PPH pilot program under which PCT work products
established by one of the Offices in its capacity as a PCT International
Searching or Preliminary Examining Authority (namely, international search
reports, written opinions and international preliminary examination
reports) may form the basis for PPH requests in each of the Offices during
national phase processing of the international application.
Under the PPH, an applicant receiving a
determination from an office of first filing that certain or all claims in
an application are allowable may request that the corresponding
application filed at a second office be advanced, out of turn, for
examination in respect of those allowable claims.
FAST TRACK PATENT PROSECUTION HIGHWAY REQUIREMENTS
Requirements. For a corresponding United States
patent application filed after the foreign application, an applicant must
meet six requirements to participate in the fast track program:
- A petition submitted prior to start of U.S.
examination of the application. As of May 25, 2010, the USPTO
eliminated the $130 filing fee for the
petition to make special under the PPH programs.
- A statement claiming priority for the application under the Paris
Convention.
- A copy of the claims found allowable by the foreign patent office.
- An English language correspondence table showing how the claims
correspond to those in the non-English application and a statement
that the English translation is accurate.
- A copy of any foreign patent office actions unless they are
available electronically from these patent offices.
- An information disclosure statement listing the documents cited in
the foreign office actions plus copies of the cited documents except
for U.S. patents or U.S. patent application publications.
Available are:
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