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USPTO Develops Projects With Korean, Nordic, Israel Patent Offices

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

24 June 2011


The United States Patent and Trademark Office (USPTO) has announced three new and expanded pilot projects with the Nordic Patent Institute (NPI), the Israel Patent Office (ILPO) and the Korean Intellectual Property Office (KIPO), respectively, to allow applicants to obtain corresponding patents faster and more efficiently in each country.

The USPTO’s announcement of a new pilot project for the Patent Prosecution Highway (PPH) with the NPI is based on NPI’s Patent Cooperation Treaty (PCT) work products (PCT-PPH pilot programme). 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 will allow applicants to obtain corresponding patents faster and more efficiently in the US. Under the PCT-PPH pilot programme, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the NPI 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.

“This pilot with the NPI 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 the NPI and its member states,” said Lone Hartung Nielsen, Director of the 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.

The USPTO’s new pilot project for the PPH with the ILPO should also permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. Under this PPH pilot programme, an office of second filing may utilise the search and examination results of a national application filed in the office of first filing.

The Head of the ILPO, 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.” Kappos added that “this new agreement now adds the first patent office in the Middle East region.”

The USPTO also announced the expansion of the PCT-PPH pilot programme with the KIPO. The USPTO-KIPO PCT-PPH pilot started June 1, 2010 and originally allowed only PCT work product from the 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 the KIPO.

“This pilot expansion will allow applicants in both countries to benefit from the PCT work done by the other office,” Kappos commented. “The PCT-PPH programme will allow users to get patent protection more quickly for their inventions, which ultimately will promote greater exports for global trade.”

The KIPO’s Commissioner Soowon Lee said: “The expanded PCT-PPH pilot has broken new ground for the KIPO. Expedited examinations based on the PCT work products of the other office will pave the way for applicants from both Korea and the US to obtain patents at the KIPO and the USPTO in an easier and faster manner.”

The purpose of the trial programmes is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at the USPTO, as well as the other patent offices. The trial periods will start on July 1, 2011, and are 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 periods.

TAGS: patents | Denmark | Iceland | law | intellectual property | patent highway | Israel | Norway | agreements | patent search | Korea, South | United States

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