Navigating the Patent Prosecution Highway

Navigating the Patent Prosecution Highway

(PPH)

Presented by Chuck Meeker

© 2016 Workman Nydegger

PPH: A Brief Overview

• How PPH works:– Claims determined allowable in a participating Office of Earlier Examination

(OEE); the corresponding U.S. application (in Office of Later Examination (OLE)) is advanced out of turn – Still examined according to U.S. patent law.

• Purpose of PPH:– Work sharing: OLE can utilize work product (search and examination

results) of OEE; more thorough examination; improve patent quality.– Office efficiency: avoiding duplication of work among jurisdictions. – Time and cost savings: expedites the examination process in the OLE;

determine patentability faster in multiple jurisdictions.

PPH: A Brief History

• July 2006 – US launches PPH pilot program(s) and develops “partnerships” - agreements with each partnering Office, individually.– an application whose claims have been determined to be patentable in an Office of

First Filing (OFF) may be eligible for accelerated examination in an Office of Second Filing (OSF).

• January 2010 – US implements PCT-PPH; ISR “allowable” claims (novelty / inventive step / industrial application).

• May 2010 – PPH 2.0; PPH request no longer requires petition to make special under 1.102(d) – for reasons other than age/illness/energy/etc. – and $130 fee under 1.17(h). – Instead, advance out of turn under 1.102(a) – expedite business of Office; w/o fee.

• July 2011 – US implements revised requirements.– Replace OFF / OSF with OEE / OLE for applications sharing a priority/filing date.

• January 2014 – US launches Global PPH / IP5 PPH pilot programs; “Uniformity” of rules among partner states.– USPTO treats all PPH requests and PPH approved applications the same. – All partner Offices adhere to same minimum requirements.

Global / IP5 PPH: Implementation

• Global PPH and IP5 PPH pilot programs are running concurrently AND are substantially identical.– differing only with regard to their respective participating offices and trial

period.– Global PPH pilot runs for 1 year (ending January 5, 2014).– IP5 PPH pilot runs for 3 years (ending January 5, 2017).– Either may be extended or terminated with approval of ALL Offices.– Any Office may opt-out at any time for any reason.

• USPTO opted for participation in BOTH programs.– file request based on work product of any office participating in either

program. – same request form and no need to specify which program is being

utilized.– Global PPH and IP5 PPH pilot programs supersede any prior PPH program

between USPTO and each Global PPH and IP5 PPH participating Office. – Any existing PPH programs between the USPTO and offices that are not

participating in either Global PPH or IP5 PPH pilot program remain in effect.

NON-Global / IP5 PPH: Individual partners (special forms)

Austria

Columbia

Czech Republic

Germany

Mexico

Nicaragua

Philippines

Singapore

Taiwan

Global / IP5 PPH: Eligibility Requirements in USPTO

• (1) OEE must be a Global / IP5 PPH participating Office.– “corresponding” (earlier-examined) national or regional application filed

with another Global / IP5 PPH participating office; or – “corresponding” (earlier-examined) PCT international application where a

Global / IP5 PPH participating offices was the ISA or IPEA.


• (2) U.S. application for later examination must have the same earliest date (priority or filing) as the earlier-examined, corresponding application. – US utility + foreign-filed and/or PCT application – filed on

same day.– US utility foreign-filed and/or PCT application – priority

claim. – US provisional US non-provisional + foreign-filed application

– priority claim.– foreign-filed and/or PCT application US utility / national

stage entry – priority claim.


• (3) The corresponding application has at least one claim indicated to be allowable / patentable by the OEE in its capacity as a national or regional Office, ISA, or IPEA.– A claim determined as novel, inventive, and having industrial

application by the ISA or IPEA has the meaning of allowable / patentable for the purposes of this program.


• (4) ALL claims in the U.S. application must sufficiently correspond (or be amended to sufficiently correspond) to the allowable / patentable claims in the corresponding OEE application. – “sufficiently correspond” = accounting for differences due to

claim format requirements, the claim is of the same or similar scope as a claim indicated as allowable / patentable in the OEE application.

– “sufficiently correspond” = narrower dependent claim depending from a claim of same or similar scope as a claim indicated as allowable / patentable in the OEE application.

– BUT, cross-category claims ≠ “sufficiently correspond” - e.g., OEE application contains only process claims; any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims which sufficiently correspond to allowable /patentable claims in the OEE application.


• (5) Substantive examination of the U.S. application (i.e., in the OLE) has NOT begun. – Notice to File Missing Parts ≠ substantive examination.– Restriction Requirement ≠ substantive examination.

• NOTE: at this point, you may not need PPH; application will not likely be examined any faster than its normal examination process even if your PPH request is granted – Examiners will generally examine an application within 60 days from the date a reply to the restriction requirement is filed (i.e., by the time your PPH request is decided, your application would probably be examined in its regular turn anyway).

Global / IP5 PPH: Required Documents

• (1) A request for participation in the Global / IP5 PPH pilot program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). NO FEE is required.

• (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.– NOTE: each submitted via EFS-Web and indexed with the

document description "Petition to make special under the Patent Pros Hwy."


• (3) A copy of the allowable claims and OEE work product relevant to allowability, including:

(A) the office action issued just prior to the "Decision to Grant a Patent" (e.g., the latest "Notification of Reasons for Refusal") in the OEE national / regional application, along with an English translation thereof, if applicable; or

(B) the latest work product in the international phase of the OEE PCT application (e.g., the Written Opinion of the ISA or, where a demand under PCT Chapter II has been filed, the Written Opinion of the IPEA or the International Preliminary Examination Report), along with an English translation thereof, if applicable.

– NOTE: if the office action or PCT work product is already present in the U.S. application or is available via the Dossier Access system or the PATENTSCOPE system of the World Intellectual Property Organization (WIPO), the applicant must identify the document and request USPTO obtain a copy, but need not supply a copy thereof.


• (4) An information disclosure statement (IDS) listing the documents cited in the office action or PCT work product submitted under item (3) above, along with copies of all documents except U.S. patents and U.S. patent application publications. – NOTE: submitted via EFS-Web and indexed with the

document description “Information Disclosure Statement (IDS).”

– NOTE: any IDS or document copies submitted in the U.S. application prior to the Global / IP5 PPH request need not be resubmitted.

– NOTE: document copies not in English require a concise explanation of relevance. English language version of search report indicating degree of relevance is sufficient.

Global / IP5 PPH: U.S. request Granted; Dismissed; Denied

• Requests that meet all eligibility requirements AND properly include all required documentation are GRANTED, and the application is advanced out of turn.

• Requests that do not meet all eligibility requirements are immediately DENIED, and application awaits action in its regular turn.

• Requests that meet all eligibility requirements BUT do not properly include all required documentation are DISMISSED, and applicant is given ONE chance to fix it.

• DISMISSED requests that are not properly corrected are then DENIED.

Global / IP5 PPH: Misc.

• Following a DENIED request, a continuation or divisional application may be filed and a new request submitted.

• Special status granted in an application carries over to an RCE of the application.

• A preliminary amendment may be filed along with the request, but must be indexed with the document description “preliminary amendment.”

• Amendments filed after a PPH request is granted must sufficiently correspond to one or more allowable / patentable claims in the OEE application and the applicant must submit a statement certifying the same.

Global / IP5 PPH: Misc.

• The Global / IP5 PPH pilot program does not absolve applicants of all their duties of candor and good faith under 1.56 and 11.18.– NOTE: by properly submitting an IDS and OEE work product, applicant

would be considered to have complied with the duty to bring to the attention of the USPTO any material prior art cited in corresponding foreign applications

• Participating Offices will use the online systems to access and assess supporting documents as much as possible.

• Machine translations are acceptable unless they are of insufficient quality; then manual translation required.

• PTA is still available to PPH applications.• While no extension of time is available during

request for PPH treatment, extensions of time are still available during prosecution of PPH applications.

Global / IP5 PPH: For More Information, please visit:

http://www.uspto.gov/patents/init_events/pph/

http://www.jpo.go.jp/ppph-portal/aboutpph.htm





Navigating the Patent Prosecution Highway

Law

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