News and Press Releases
 

The Patent Prosecution Highway Pilot Program

Prepared by Andrew Connors

            The Patent Prosecution Highway (PPH) pilot program is an experimental program which seeks to provide more efficient examination of cases which are reviewed by both the United States Patent and Trademark Office (USPTO) and the Japanese Patent Office (JPO), hopefully saving both offices time and decreasing the backlog of cases at the USPTO.  The program is beneficial to certain applications since these applications will be moved ahead of the regular examination queue.

            An application is eligible if it meets the following criteria:

  • 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, or it is a continuing application that validly claims the benefit of the U.S. application under 35 U.S.C. 120 and the priority date of JP application(s) under 35 U.S.C. 119(a).  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.
  • The corresponding JPO application(s) have at least one claim that was determined by the JPO to be allowable/patentable.  A copy of the allowable/patentable claims from the JPO application(s), along with an English translation and a statement that the English translation is accurate, must be submitted.  Alternatively, if the JPO application(s) are available through the Dossier Access System, a request can be made that the USPTO retrieve the Japanese application(s) from that system.  In this case, the English translation along with statement of accuracy must still be submitted.
  • All the claims for which a request for participation in the 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.  A claims correspondence table, which denotes the correspondence between the claims of the JPO application(s) and the claims of the US application, must be submitted in English.
  •  Examination of the U.S. application has not yet begun.

           
            In order to be considered for the program, an applicant must file a request for participation in the PPH pilot program along with a petition to make the U.S. application special under the PPH pilot program.  A petition fee of $130.00 also must be paid. 

            In addition to the requirements set forth above, the applicant must also 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 and a statement that the translation is accurate.  An applicant can alternatively request that a copy of the office actions from the JPO application(s) be retrieved from the Dossier Access System, if available, although English translations and a statement of their accuracy must still be submitted by the applicant. An applicant must also submit an information disclosure statement listing the documents cited by the JPO in the applicable JPO office actions.  As always, applicants must submit copies of all non-US patents or patent application publications.

            It should be noted that should a request fail to meet all the requirements, the applicant will be notified and be given only one opportunity to perfect the request.  It should also be noted that continuing applications must apply for special consideration under the program; the PPH status of a parent application will not carry over to its child.

            Should any claims be amended or added to the U.S. application after participation in the PPH pilot program has been granted, those amended or new claims must sufficiently correspond to one or more allowable/patentable claims in the JPO application(s).  Again, the applicant is required to submit a claims correspondence table explaining the correspondence between the amended or new claims and the claims of the JPO application(s).  Should the amended or new claims 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.  An 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 in the case where the JPO has reversed a holding of allowability.  Of course, these must be submitted along with English translations and a statement that the translations are accurate.  

            Once a U.S. application has received special status under the PPH pilot program, it will be examined at the USPTO before all other categories of applications, except those clearly in condition for allowance, those with set time limits, and those that have been granted special status for “accelerated examination.”

 

For more information please see:

 
 © 2005 Rossi, Kimms & McDowell LLP ~ View Disclaimer ~

.:. Site design by Dulles Digital Designs .:.