Moving Patent Applications into the Fast Lane
In July 2006, the U.S. Patent and Trademark Office (USPTO) initiated a pilot program with the Japanese Patent Office allowing its examiners to draw from the work of Japanese examiners in helping to streamline the patent examination process. Dubbed a “patent prosecution highway” or “PPH,” this program has grown due to alliances between the USPTO and several additional patent offices around the world.
Under the PPH program, an applicant receiving a favorable ruling from the patent office in which it first filed an application may petition that another patent office fast track the examination of corresponding claims in a later, related application. The PPH program permits U.S. patent examiners to use the work of their counterparts in certain foreign countries as a starting point for U.S. patent examination procedures in order to conserve examination resources and permit applicants to obtain patents faster. Participation of U.S. patent applicants in this program was limited due to the requirement that the first patent application on the particular invention must have been filed outside the U.S. As a practical matter, a large number of U.S. patent applicants make their first filing with the USPTO, rather than one of the foreign PPH participating offices. Therefore, a favorable ruling in a corresponding foreign application would not be of any assistance in the first-filed U.S. application.
The USPTO recently initiated a pilot PPH program that has made the PPH available to a larger number of applicants. This pilot program permits applicants to request fast-track examination procedures based upon favorable rulings rendered in certain applications filed under the Patent Cooperation Treaty (PCT). Under the PCT-PPH program, an applicant receiving a written opinion or an international preliminary examination report from either the Korean Intellectual Property Office (KIPO), European Patent Office (EPO), or Japan Patent Office (JPO) that at least one claim in a PCT application has novelty, inventive step, and industrial applicability may request that the USPTO expedite the examination of corresponding claims in related applications.
In order to encourage participation in the PPH program, as of May 25, 2010, the USPTO has eliminated the petition fee that it had previously required of those applicants seeking to enter the PPH program.
While the PCT-PPH program has only been available a short time, it has received favorable reviews from persons using the program. There have been numerous reports circulating in the blogosphere of the receipt of notices of allowance from the USPTO within days of acceptance into the PCT-PPH program. Therefore, the signs thus far appear to indicate that the program has the potential of being a valuable tool for U.S. patent applicants seeking much faster issuance of patents. If you would like to discuss whether a patent application may be eligible for participation in one of the USPTO’s PPH programs, please contact any of the patent professionals at Hovey Williams.
Greg Skoch is a partner at Hovey Williams. You can contact Greg at .(JavaScript must be enabled to view this email address).