In a prior article, we reported on the Patent Prosecution Highway (“PPH”) program developed to promote fast-track patent examination procedures and allow patent offices from around the world to take advantage of work already done by other offices. The PPH was one of the initiatives that was undertaken by the USPTO to help with the always increasing load of patent examinations.
Until recently, the PPH program involved bilateral agreements between other patent offices that provided for the fast-tracking of an application in a second country when the patent office in the first country had found allowable claims. This model of the PPH involved a one-way relationship between an application filed in an office of first filing and an application filed in an office of second filing. As long as one claim was allowed in the office of first filing, the application filed in the office of second filing could be advanced out of turn. This office of first and second filing relationship made the PPH a one-way road with not many off ramps.
The PPH concept recently took a new direction with what is referred to as Patent Cooperation Treaty (“PCT”) PPH agreements. These new PCT PPH agreements do not focus on an office of first filing and an office of second filing. Rather, the PCT PPH program focuses on what office issued the PCT Written Opinion and/or the International
Preliminary Examination Report (IPER).
The PCT has long been a favorite first step for international patent prosecution. An applicant can file a single PCT application designating all PCT member states as a
vehicle for a first consolidated examination by a single patent office. This single office, designated by the applicant, will issue a Written Opinion detailing the patentability of
the invention as judged by the designated office. The designated office will also later issue an IPER likewise directed to patentability. The Written Opinion and IPER provide for a unified and publicly available examination of the application before it enters national stage examinations in various individual patent offices. Under the new PCT PPH program, the Written Opinion or IPER can now be used to additional benefit in certain national stage filings.
The PCT PPH program allows a US applicant to apply for PPH fast-track procedures provided that a patent office with which the USPTO has a PCT PPH agreement
finds that at least one claim has novelty, inventive step, and industrial applicability in either a Written Opinion or IPER. For example, a PCT PPH agreement between the USPTO and the EPO became effective on January 29, 2010. Under this new agreement, if the EPO is designated as the International Searching Authority or International Preliminary Examinating Authority and finds allowable claims, then an applicant in
the US can request that the US national stage application associated with the PCT application be advanced out of turn pursuant to the PCT PPH program. The claims in
the national stage application must correspond to the claims that were found allowable by the PCT designated office, the EPO in this example.
PCT PPH agreements are presently in place between the USPTO and the Austrian, European, Japanese, Korean, Russian, and Spanish patent offices. In combination with the numerous bilateral PPH agreements now available, the new PCT PPH agreements provide a practitioner with additional tools for managing an international patent portfolio. Using these tools can shave years off of the prosecution time of a patent application, thus saving applicants money and resulting in quicker issuances.
One of the founding partners of Carstens, Allen & Gourley, LLP, Colin Cahoon concentrates his practice in patent law with an emphasis on patent portfolio management.
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