On January 14, 2008, the USPTO announced the expansion of its pilot cooperation program to include the patent offices of Canada and the Republic of Korea. The program first began with the Japanese Patent Office in July 2006, was expanded to the United Kingdom Intellectual Property Office in September 2007, and building on the initial success of these pilots, the Patent Prosecution Highway (PPH) has been expanded to include two additional offices. The program permits member offices to take into account the work done on a corresponding application, that is an application in which the disclosure and claims are for the most part identical, and to use the search results and examination strategy. For example, an applicant that has filed corresponding applications in at least two offices involved in the program, can use the search and examination results of a first application that has been acted on by one of the offices which has determined that the claims are allowable, to have the corresponding application receive expedited treatment by the second and subsequent offices, including an examination out of turn by the second office.
The pilot PPH program takes effect on 28 January 2008 and will continue for one year. The program can be extended for another year if insufficient data have been compiled to judge its effectiveness. Also, monitoring of the program is required as any participating country office may cancel its participation before the first year is completed, that is, before January 2009, for any reason, although the major one of concern is that an excessive number of applicants will petition for the PPH and so overwhelm the patent office of a favored second application country.
To take advantage of the PPH program, a second filed application in a participating PPH country must meet the following requirements (simplified somewhat for this explanation):
1) The application must be a Paris convention application based on a country application of one of the countries taking part in the pilot program, or be a PCT application based on a country application of one of the participating countries.
2) The application in the first filed country has at least one claim that is indicated to be allowable and the claims of the second filed application are identical or can be amended to be identical to the allowable claim(s).
3) Examination has not yet begun in the office of the second filed application.
4) The Applicant must file a request with a petition to make special in the office of the second filed application, together with any applicable fee.
5) The Applicant must submit all office actions that are relevant to patentability from the file wrapper history of the first filed application.
6) In the USPTO, applicant must file an information disclosure statement citing all the references that were cited in the application prosecution in first filed office.
Additional procedural requirements must be met, for example, electronic filing of the petition and supporting documents. This pilot PPH program appears to be driven by the offices' desire to spread the work for a series of multiple country applications having identical claims, and so make the process of examination easier by building on the work of each other's examining corps. One obvious drawback to this program is the loss of an independent examination by other offices. Such independent search and examination often develops pertinent art that when addressed in the course of an application prosecution, renders claims of a scope more likely to withstand a subsequent validity attack.
Vol. 53, June 2010