United States Patent and Trademark Office OG Notices: 13 June 2006
Patent Prosecution Highway Pilot Program
between the United States Patent and Trademark Office
and the Japan Patent Office
I. Background
The United States Patent and Trademark Office (USPTO) has
established a 21st Century Strategic Plan to transform the
USPTO into a more quality-focused, highly productive, responsive
organization supporting a market-driven intellectual property system.
One of the specific action plans of the 21st Century
Strategic Plan is to share search results with other intellectual
property offices. By relying on the search results obtained via
partnerships with other intellectual property offices, we can reduce
duplication of efforts and decrease workload.
Since the beginning of 2003, the USPTO, the European Patent
Office (EPO) and the Japan Patent Office (JPO) (the Trilateral Offices)
have participated in search exchange projects aimed at promoting the
mutual exploitation of search results to a maximum extent practicable.
The prior projects involved the establishment of a technical and
procedural framework to ascertain the usefulness of the search exchange
results. The results of the prior projects show that there is a
potential benefit in exploiting the search results of the office of
first filing (OFF) to reduce workload in the office of second filing
(OSF) and to improve quality where the OFF performed the search in
advance of the OSF working on the corresponding application. In order
to exploit the search results of the OFF to the maximum extent
practicable, timely delivery of the search results from the OFF to the
OSF is critical. Because of JPO's request for the examination system,
the percentage of applications where the JPO as the OFF could provide
its search results to the USPTO is less than 10%.
In order to help address the timing disparity in availability of
search results that currently exists among the Trilateral Offices when the
JPO is the OFF, the USPTO and the JPO have worked together to establish a
framework, called the "Patent Prosecution Highway" (PPH), that will provide
applicants that file at the JPO with an incentive to file a request for
examination at an earlier time and to obtain search and examination
results early from the JPO (where the JPO is the OFF). Under this
framework, an applicant whose claims are determined to be
allowable/patentable in the OFF can request that its corresponding
application filed in the OSF be advanced out of turn for examination
(e.g., undergo accelerated examination) provided certain conditions are
met. The OSF would be able to exploit the search and examination
results of the OFF and applicant may be able to obtain a patent on the
corresponding application filed in the OSF faster since the OSF
application is advanced out of turn for examination.
II. Patent Prosecution Highway Pilot Program
The PPH was established to enable an applicant whose claims are
determined to be allowable/patentable in the OFF to have the
corresponding application filed in the OSF advanced out of turn for
examination while at the same time allow the OSF to exploit the search
and examination results of the OFF. At the November 2005 Trilateral
Conference, the USPTO and the JPO agreed to commence a PPH pilot
program to assess the feasibility of the PPH program. The USPTO and JPO
jointly announced the PPH pilot program at the May 22-24, 2006
Trilateral Technical Meeting held in Japan.
Note that where the USPTO is the OFF and the U.S. application
contains claims that are determined to be allowable/patentable, the
U.S. applicant may likewise request accelerated examination in the JPO
for the corresponding application filed in the JPO as the OSF. The
procedures and requirements for filing a request to the JPO for
participation in the PPH pilot program are available from the JPO web
site at: www.jpo.go.jp/index.htm
Where the USPTO is the OSF and the corresponding application
filed in the JPO as the OFF contains claims that are determined to be
allowable/patentable, the applicant may request participation in the
PPH pilot program in the USPTO and petition to make the U.S.
application special under the PPH pilot program. The procedures and
requirements for filing a request in the USPTO for participation in the
PPH pilot program are set forth below.
A. Trial Period for the PPH Pilot Program
The PPH pilot program will commence on July 3, 2006, for a
period of one year ending on July 3, 2007. The trial period may be
extended for up to an additional year if necessary to adequately assess
the feasibility of the PPH program. The USPTO and the JPO will evaluate
the results of the pilot program to determine whether and how the
program should be fully implemented after the trial period. The PPH
pilot program may also be terminated early if the volume of
participation exceeds manageable level. Notice will be published if the
PPH pilot program will be terminated before the July 3, 2007 date.
B. Requirements for Requesting Participation in the PPH Pilot Program
in the USPTO
In order to be eligible to participate in the PPH pilot program, the
following conditions must be met:
(1) The U.S. application is a Paris Convention application
validly claiming priority under 35 U.S.C. 119(a) and 37 CFR 1.55 to one
or more applications filed in the JPO. Continuing applications that
validly claim the benefit of the U.S. application under 35 U.S.C. 120
and the priority date of JPO application(s) under 35 U.S.C. 119(a) are
also eligible. PCT international applications (including national stage
applications filed under 35 U.S.C. 371), provisional applications,
plant and design applications, reissue applications and reexamination
proceedings are excluded.
(2) The JPO application(s) have at least one claim that was
determined by the JPO to be allowable/patentable. Applicant must submit
a copy of the allowable/patentable claims from the JPO application(s)
along with an English translation thereof and a statement that the
English translation is accurate. If a copy of the allowable/patentable
claims from the JPO application(s) is available via the Dossier Access
System, applicant may request that the USPTO obtain the copy via the
Dossier Access System. In this case, applicant is still required to
submit the English translation along with the statement that the
translation is accurate. If the copies cannot be obtained by the USPTO
via the Dossier Access System due to technical problems, applicant will
be notified and requested to provide the necessary documents.
(3) All the claims in each U.S. application for
which a request for participation in the PPH pilot program is made must
sufficiently correspond or be amended to sufficiently correspond to the
allowable/patentable claims in the JPO application(s). Claims will be
considered to sufficiently correspond where, accounting for differences
due to translations and claim format requirements, the claims are of
the same or similar scope. Applicant is also required to submit a
claims correspondence table in English. The claims correspondence table
must indicate how all the claims in the U.S. application correspond to
the allowable/patentable claims in the JPO application(s).
(4) Examination of the U.S. application for which participation
in the PPH pilot program is requested has not begun.
(5) Applicant must file a request for participation in the PPH
pilot program and a petition to make the U.S. application special under
the PPH pilot program. A sample request/petition form is attached to
this notice. Applicants are encouraged to use the USPTO
request/petition form. A petition fee under 37 CFR 1.17(h) for the
petition to make special under 37 CFR 1.102(d) is required and must be
submitted.
The request for participation in the PPH pilot program and all
the supporting documents must be faxed to:
The Office of the Commissioner for Patents at 571-273-0125, directed to
the attention of Magdalen Greenlief.
(6) Applicant must submit a copy of all the office actions
(including a "Decision to Grant a Patent") from each of the JPO
application(s) containing the allowable/patentable claims that are the
basis for the request, along with an English translation thereof and a
statement that the English translation is accurate. If a copy of each
of the office actions from the JPO application(s) is available via the
Dossier Access System, applicant may request that the USPTO obtain the
copy via the Dossier Access System. In this case, applicant is still
required to submit the English translation along with the statement
that the translation is accurate. If the copies cannot be obtained by
the USPTO via the Dossier Access System due to technical problems,
applicant will be notified and requested to provide the necessary
documents.
(7) Applicant must submit an information disclosure statement
listing the documents cited by the JPO examiner in the JPO office
action. Applicant must submit copies of all the documents cited in the
JPO office action except U.S. patents or U.S. patent application
publications.
Where the request for participation in the PPH pilot program
and special status are granted, applicant will be notified and the U.S.
application will be advanced out of turn for examination. In those
instances where the request for participation in the PPH pilot program
does not meet all the requirements set forth above, applicant will be
notified and the defects in the request will be identified. Applicant
will be given one opportunity to perfect the request in a
renewed request for participation. If perfected, the request and
special status will be granted, applicant will be notified and the U.S.
application will be advanced out of turn for examination. If not
perfected, applicant will be notified and the application will await
action in its regular turn.
(8) Request for participation in the PPH pilot program and
special status granted in a parent application will not
carry over to a continuing application. Continuing applications must
separately fulfill the conditions set forth above.
If any of the documents identified in items (2), (6) and (7)
above have already been filed in the U.S. application prior to the
request for participation in the PPH pilot program, it will not be
necessary for applicant to resubmit these documents with the request
for participation. Applicant may simply refer to these documents and
indicate in the request for participation in the PPH pilot program when
these documents were previously filed in the U.S. application.
C. Special Examining Procedures
Once the request for participation in the PPH pilot program and
special status have been granted to the U.S. application, the U.S.
application will be taken up for examination by the U.S. examiner
before all other categories of applications except those clearly in
condition for allowance, those with set time limits, such as examiner's
answers, and those that have been granted special status for
"accelerated examination."
Any claims amended or added after the grant of the request for
participation in the PPH pilot program must sufficiently correspond to
one or more allowable/patentable claims in the JPO application(s).
Applicant is required to submit a claims correspondence table along
with the amendment (see B.(3) above). If the amended or newly added
claims do not sufficiently correspond to the
allowable/patentable claims in the JPO application(s), the amendment
will not be entered and will be treated as a non-responsive
reply. Applicant must also submit copies of any office actions from
each of the JPO application(s) issued after the grant of the request
for participation in the PPH pilot program (especially where the JPO
might have reversed a prior holding of allowability) along with English
translations thereof and a statement that the English translation is
accurate.
The PPH program does not absolve applicants of all
their duties under 37 CFR 1.56. By complying with requirements 6 and 7
identified above, applicants would be considered to have complied with
their duties to bring to the attention of the USPTO any material prior
art cited in the corresponding foreign application(s) (see MPEP Sec.
2001.06(a)). Applicants must still provide to the USPTO other
information known to them to be material to patentability.
Any inquiries concerning this notice may be directed to
Magdalen Greenlief, Office of the Deputy Commissioner for Patent
Examination Policy at 571-272-8800 or at magdalen.greenlief@uspto.gov.
JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
Please refer to the Official Gazette for `Request For Participation' Forms.