By Donald Zuhn --
Following the implementation of its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) in 2006, the U.S. Patent and Trademark Office proceeded to establish PPH programs with nearly thirty other patent offices over the next seven years. The PPH enables applicants who receive a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office. Last year, the USPTO announced the implementation of two new pilot PPH programs -- the Global PPH and IP5 PPH –- which the Office indicated would simplify access to participating PPH offices. In moving to the Global/IP5 programs, the USPTO noted that the administration of multiple PPH programs with so many other offices, each having its own particular requirements, had become increasingly cumbersome.
For twenty of the patent offices that once participated in individual PPH programs with the USPTO, the two pilot programs replaced existing forms and procedures that were unique to each PPH country pairing, with one form and common rules for participating countries. Because the USPTO elected to participate in both programs, the Office noted that a PPH request could be filed with the USPTO based on the work product of any office participating in either pilot program. In addition, because the requirements for participation in both programs are equivalent, USPTO applicants need not specify which pilot program is being utilized (in fact, the Office provided a single form -- PTO/SB/20GLBL -- for use in requesting participation in either program).
The Global PPH and IP5 PPH pilot programs are substantially identical, differing only with regard to the participating offices in each program. The twenty-one offices participating in the Global/IP5 programs are IP Australia (IP AU), the Austrian Patent Office (APO), the Canadian Intellectual Property Office (CIPO), China's State Intellectual Property Office (SIPO), the Danish Patent and Trademark Office (DKPTO), the European Patent Office (EPO), the National Board of Patents and Registration of Finland (NBPR), the Hungarian Intellectual Property Office (HIPO), the Icelandic Patent Office (IPO), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Nordic Patent Institute (NPI), the Norwegian Industrial Property Office (NIPO), the Portugal National Institute of Industrial Property (INPI-PT), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Intellectual Property Office of Singapore (IPOS), the Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), the United Kingdom Intellectual Property Office (UK IPO), and the United States Patent and Trademark Office (USPTO). The IP5 offices are the EPO, JPO, KIPO, SIPO, and USPTO.
(1) The U.S. application for which participation in either program is requested must have the same priority date or filing date as that of a corresponding national or regional application filed with another participating office, or a corresponding PCT application for which a participating office was the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA).
(2) The corresponding application has at least one claim indicated by the office of earlier examination (OEE) to be allowable/patentable.
(3) All claims in the U.S. application for which participation in either program is requested must sufficiently correspond to the allowable/patentable claims in the corresponding OEE application.
(4) Substantive examination of the U.S. application for which participation in either program is requested has not begun.
A more comprehensive discussion of the requirements for participation in the Global/IP5 programs can be found here.
To participate in the Global/IP5 pilot programs, a USPTO applicant must submit the following via the EFS-Web:
(1) A request for participation in either program and a request that the U.S. application be advanced out of tum for examination by order of the Director.
(2) A claims correspondence table in English, indicating how and certifying that all the claims in the U.S. application correspond to allowable/patentable claims in the OEE application.
(3) A copy of the office action issued just prior to decision to grant in the OEE national/regional application, along with an English translation thereof (if necessary), or the latest work product in the international phase of the OEE PCT application.
(4) An information disclosure statement (IDS) listing the documents cited in the office action or PCT work product submitted for item 3 along with copies of all documents except U.S. patents and U.S. patent application publications.
Separate PPH programs with the USPTO remain in place for nine other offices that are not participating in the Global/IP5 programs: the Colombian Superintendence of Industry and Commerce (SIC), the Industrial Property Office of the Czech Republic (IPOCZ), the German Patent and Trade Mark Office (DPMA), the Mexican Institute of Industrial Property (IMPI), the Nicaraguan Registry of Intellectual Property (NRIP), the Intellectual Property Office of the Philippines (IPOPHL), the Patent Office of the Republic of Poland (UPRP), the Romanian State Office for Inventions and Trademarks (OSIM), and the Taiwan Intellectual Property Office (TIPO).
Additional information regarding the Global/IP5 PPH and separate PPH programs, including links to the appropriate request forms, can be found here.