Patent Prosecution Highway. The 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 other nations.

A complete list is available on the USPTO web site at http://www.uspto.gov/patents-getting-started/international-protection/patent-prosecution-highway-pph-fast-track.

The current nations (some as of 01-OCT-2012) are: Australia (AU), Austria (AT), Canada (CA), China (CN), Czech Republic (CZ), Denmark (DK), European Patent Office (EP), Finland (FI), Germany (DE), Hungary (HU), Iceland (IPO), Israel (IL), Japan (JP), Korea (KR), Mexico (IMPI), Norway (NO), Russia (RU), Singapore (SG), Spain (ES), Sweden (PRV), Taiwan Intellectual Property Office (TIPO), United Kingdom (UK) and the Nordic Patent Institute (an Intergovernmental Organisation established by the governments of Denmark (DK), Iceland (IS) and Norway (NO)). The Philippines and Portugal will be added in January 2013.

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.

PPH MOTTAINAI. Applicants in the United States Patent and Trademark Office are able to use a positive patentability decision by any of seven other patent offices to seek expedited consideration of their U.S. application regardless of what office was first office to receive the application filing. These patent office are—

1. Canadian Intellectual Property Office (CIPO)
2. European Patent Office (EPO)
3. Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent)
4. Japan Patent Office (JPO)
5. IP Australia (AU)
6. Korean Patent Office (KIPO)
7. National Board of Patents and Registration of Finland (NBPR)
8. Portugal National Institute ofIndustrial Property (INPI-PT)
9. Spanish Patent and Trademark Office (SPTO) and
10. United Kingdom Intellectual Property Office (UKIPO).

See the USPTO Press Release. The name of this pilot program is Mottainai, whiich is a Japanese word explained by the Japanese Patent Office.

Applicable to National Applications. The PPH 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. The World Intellectual Property Organization also has a web page on PCT applications qualifying for PPH coverage.

PCT Pilot PPH. The patent offices of Austria, Australia, China, Europe, Finland, Korea, Japan, Nordic Patent Institute, Russia, Spain, and Sweden 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 Patent Cooperation Treaty/Patent Prosecution Highway (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

PPH 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.

• 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 the latest foreign patent office action 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.

Visit the USPTO home page for the PPH program.