USPTO Announces Three Patent Prosecution Highway Pilots

By Gene Quinn
June 20, 2011

The United States Patent and Trademark Office has just announced the expansion of the PCT-PPH pilot program with the Korean Intellectual Property Office (KIPO), as well as two new PPH pilot programs; a new pilot project for the Patent Prosecution Highway with the Nordic Patent Institute (NPI) based on NPI’s Patent Cooperation Treaty (PCT) work products and a new pilot project for the Patent Prosecution Highway (PPH) with the Israel Patent Office (ILPO).

The USPTO-KIPO PCT-PPH pilot started June 1, 2010 and originally allowed only PCT work product from KIPO as a basis to enter PPH at the USPTO. The expanded pilot will now permit PCT work product done by the USPTO as a basis to enter into KIPO. The expedited examination in each office allows applicants to obtain corresponding patents faster and with greater quality in each country. The PCT-PPH program will use international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty. The expanded portion of the pilot will start on July 1, 2011, and is set to expire on May 31, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. The offices will provide notice of any adjustment in the trial period.

The Nordic Patent Institute is an Intergovernmental Organisation established by the governments of Denmark, Iceland and Norway. The USPTO-NPI PCT-PPH will permit the USPTO to benefit from the PCT work previously done by the NPI, which reduces the examination workload and improves patent quality. The expedited examination allows applicants to obtain corresponding patents faster and more efficiently in the United States. The PCT-PPH program will use international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty. The trial period will start on July 1, 2011, and is set to expire on June 30, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. The USPTO will provide notice of any adjustment in the trial period.

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The USPTO-ILHO PPH, which is not based on PCT filings, will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. Under the PPH pilot program, 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. The trial period will start on July 1, 2011, and is set to expire on June 30, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. The offices will provide notice of any adjustment in the trial period.

Office Leaders on the KIPO Announcement

“This pilot expansion will allow applicants in both countries to benefit from the PCT work done by the other office,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The PCT-PPH program will allow users to get patent protection more quickly for their inventions, which ultimately will promote greater exports for global trade.”  Commissioner Soowon Lee of KIPO said “The expanded PCT-PPH pilot has broken new ground for KIPO. Expedited examinations based on the PCT work products of the other office will pave the way for applicants from both Korea and the U.S. to obtain patents at KIPO and the USPTO in an easier and faster manner.”

Office Leaders on the NPI Announcement

“This pilot with Nordic Patent Institute will add an important partner to the growing PPH network,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Applicants will have greater opportunities to use PPH and benefit from the expedited examination and higher patent quality.”

This project is an important step forward for Nordic Patent Institute and its member states,” said Lone Hartung Nielsen, Director of NPI. “Since we started operations in 2008 it has been our top priority to provide the Nordic users with the best possible framework conditions for operating efficiently in a patent active market. This project will give our users the possibility to accelerate their application in one of the world’s most important markets. We look forward to cooperating with the USPTO on this positive development of the PCT system in the near future. ”

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Office Leaders on the ILHO Announcement

The Head of the Israel Patent Office, Mr. Asa Kling, stated “An accelerated examination in the framework of the PPH will promote effective prosecution and improvement of patent quality, while reducing workload on examiners in both offices as well as on the applicants who may enjoy this new service.”

““This new agreement now adds the first Patent Office in the Middle East Region,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The cooperation between our offices will greatly benefit our stakeholders by reducing delays due to duplication of work between our offices and improving patent quality.”

About the PCT-PPH

Under the PCT-PPH pilot program, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the KIPO was the International Searching Authority or the International Preliminary Examination Authority may request that the USPTO fast track the examination of corresponding claims in corresponding applications.

About the PPH

Under the Patent Prosecution Highway, an applicant receiving a ruling from Israel 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 Israel Patent Office.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 1 Comment comments.

  1. Dr Michael Factor June 29, 2011 7:32 pm

    Gene,

    As I follow Isael IP news, I was aware of the USPTO, ILPO super highway announcement. I don’t think it will achieve its aims of speeding up either Israel or US prosecution. See:
    http://blog.ipfactor.co.il/2011/06/25/israel-and-us-patent-offices-announce-a-superhighway-but-so-what/