USPTO Enhances Its International Patent Programme

by Glen Shapiro, LawAndTax-News.com, New York

06 July 2011

The United States Patent and Trademark Office (USPTO) has announced its participation in a pilot programme to test an enhanced framework for the Patent Prosecution Highway (PPH).

The pilot programme, which will also include the Canadian Intellectual Property Office, the Japan Patent Office, IPAustralia, the National Board of Patents and Registration of Finland, the Federal Service on Intellectual Property, Patents & Trademarks of Russia, the Spanish Patent and Trademark Office, and the United Kingdom Intellectual Property Office, builds on the success of the current PPH by modifying certain requirements to make the PPH easier to use and more widely available to a greater number of applicants.

Under the current PPH plan, eligibility is limited to re-use of search and examination results from a partner office on the first-filed, priority application in a patent family. Under the enhanced PPH framework, participation may be requested on the basis of results available on any patent family member from any office participating in this pilot, regardless of whether it was the office where the priority application was filed.

The pilot also incorporates other improvements to the basic PPH framework, including a new definition of claim correspondence, which will make the system more flexible and user-friendly without compromising efficiency or quality.

“This new pilot is an important milestone in the evolution of the PPH network,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The stakeholders in the global IP community have embraced PPH and have asked for more opportunities to use the programme. This pilot will be a more user-friendly version with greater flexibility to eliminate duplicative work.”

The new pilot will commence on July 15, 2011, for a period of one year, but may be extended for up to one year, or terminated earlier, depending on volume of activity. The USPTO will provide notice of any adjustment in the trial period.

In addition, the USPTO has advised applicants that PPH arrangements with offices not participating in this new pilot are not affected, and that work done by offices acting as authorities under the Patent Cooperation Treaty is not included in the pilot.

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