Earlier today the United States Patent and Trademark Office announced what they are referring to as “landmark Patent Prosecution Highway Pilots” with China’s State Intellectual Property Office (SIPO). David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the USPTO and SIPO Commissioner Tian Lipu announced the start of Paris Route and PCT Patent Prosecution Highway (PPH) pilot programs beginning on December 1, 2011. Meanwhile, the USPTO, in a separate press release, also announced the launching of a new pilot project for the Patent Prosecution Highway (PPH) with the Icelandic Patent Office (IPO).
As with other PPH pilot programs, these new SIPO and IPO agreements will permit each office to benefit from work previously done by the other office. The work-sharing benefits of the Patent Prosecution Highway are what every Patent Office around the world is after given the global demand for patents only continues to rise. Work-sharing arrangements of one kind or another are virtually required given the reality that patents are more valuable than ever, more desirable than ever and due to legal requirements and litigation applications need to be far more detailed than even just 10 years ago. Indeed, there is really no comparison to the level of disclose found in patent applications today compared with detail found in patent applications a generation ago.
Adding to burdens of Office worldwide is the necessary fact that technology always gets more complicated. It is easy to understand why leaders are trying to increasingly figure out on an ad hoc basis how to leverage work already done. There is no point in recreating the wheel and the international community as a whole has been extremely slow to achieve a widespread agreement, which leaves the United States and other overburdened Offices worldwide to enter bi-lateral and tri-lateral agreements.
Ostensibly the purpose of this trial program is to gauge the interest of applicants and to evaluate the programs for patent quality, efficiency and the reduction of the workload. With that in mind the SIPO agreements and the IPO agreement are one year pilot programs that will commence on December 1, 2011 and are slated to end on November 30, 2012. Both offices may extend the one year trial period upon mutual agreement, and if the past is any indication of the future these pilot programs will be extended indefinitely when they are up for renewal.
In a nutshell, expedited examination is offered by the various PPH pilot programs, which allows applicants to obtain corresponding patents faster and more efficiently in each country. Faster and more efficient treatment is the primary lure from the applicant perspective. A PPH agreement accomplishes this by permitting each office to benefit from work previously done by the other office, which reduces the examination workload.
Under the Paris Route PPH pilot program with SIPO, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. Under a PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty. Under a PPH pilot program an applicant receiving a ruling from a partner Patent Office that at least one claim in an application is patentable may request that the USPTO fast track the examination of corresponding claims in corresponding applications. Similarly, if the USPTO determines that at least one claim is patentable, the applicant may request accelerated processing of corresponding applications filed at the partner Patent Office.
The USPTO always also points out that PPH agreements increase patent quality. That is likely true, but probably not as directly as you might expect. As far as I can tell the benefit to quality comes as the result of primarily three things. First, it takes less time to examine a patent application that has arrived to the Office of Second Filing (OSF) because allowable matter has already been identified somewhere else, which substantially focuses the prosecution of these applications. Second, by requiring less time on some applications there will be more time for other applications, at least in theory. Finally, there is no doubt a self-selection that goes on from the applicants side, which means better patent applications, and the overwhelming number of those using the PPH accept the claims they get and do not circle back for more claims, or broader claims, with supplemental filings.
Full requirements for participation in each trial program at the USPTO can be found online at the USPTO PPH page.
Kappos and Tian on the USPTO – SIPO Agreements
“The PPH pilot program is a prominent landmark of the continuous deepening of bilateral patent cooperation between the SIPO and the USPTO,” said Commissioner Tian. “Patent applicants and stakeholders in both countries will benefit from the fast track examination provided by the PPH pilots. These PPH pilots will also effectively improve the capabilities of both offices to handle workloads, thereby promoting technology innovation and economic development in both countries through enhanced patent examination efficiency and quality.”
“These PPH pilots mark a significant milestone of achievement in patent cooperation between our two offices,” said Under Secretary Kappos. “They will promote high quality patents and expedite processing of patent applications in both offices by avoiding duplicative work and will provide greater costs savings to patent applicants, helping to spur greater innovation and generate greater economic growth and job creation in both countries.”
Kappos and Erlingsdóttir on the USPTO – IPO Agreement
The Director General of the Icelandic Patent Office, Borghildur Erlingsdóttir, stated “we are very pleased with the PPH agreement concluded with the USPTO and look forward to close cooperation in this respect. The PPH program is not only valuable for our customers but also for the office and our role in addressing growing backlogs and the need for increased work-sharing cooperation between offices.”
“We are excited by this new work-sharing program and welcome the Icelandic Patent Office to this new cooperative framework,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “This PPH program further expands the PPH network and gives our stakeholders more opportunities to access the benefits of improved timeliness of examination and greater patent quality.”