The U.S. Patent and Trademark Office (USPTO) has several “Patent Prosecution Highway” (PPH) programs with the patent offices of other countries. In the PPH programs, the USPTO will expedite examination of an application containing claims that have been allowed by another PPH country.
On January 29, the USPTO announced what may be the most significant PPH program yet: the PCT-Patent Prosecution Highway Pilot (PCT-PPH). Under the PCT-PPH, applicants who filed both a U.S. patent application and an international patent application under the Patent Cooperation Treaty (PCT) can petition the USPTO for expedited examination of the U.S. application if the corresponding PCT application received an indication that at least one claim has novelty, inventive step, and industrial applicability. The PCT application may receive this indication in any of the following:
- written opinion from an International Searching Authority (ISA)
- written opinion from an International Preliminary Examining Authority (IPEA), or
- an International Preliminary Examination Report (IPER) from an International Preliminary Examining Authority.
In order to qualify, the PCT application must have been reviewed by the USPTO, the European Patent Office, or the Japan Patent Office. In addition, the U.S. application must contain (or be amended to contain) claims that sufficient correspond to the claims which were found to be allowable in the PCT report.
Because ISRs are typically issued within 16 months from the priority date of the PCT application — much faster than the typical first USPTO action time of 25.8 months — this new program could significantly reduce the pendency of patent applications having allowable claims.
Another potential benefit: according to recent USPTO statistics, patent applications that participate in PPH programs typically receive action within 2-3 months from the date of the PPH request. Plus, as of November 2009, according to the same USPTO statistics, the allowance rate of PPH cases was 91%, compared to 44% for non-PPH cases.
My colleagues Paul Legaard and Dan Scolnick have published additional details about this new program on the Pepper Hamilton LLP website. For the full article, click here.
This item and the news about the USPTO’s recent budget increase cause one to almost dare to hope that the agency’s backlog and pendency problems may finally start to become resolved. This could do wonders for the patent law system.