Michael D. Stein Principal Stein IP LLC 1400 Eye Street, NW Suite 300 Washington, DC (202) Patent Prosecution Highway (PPH) The Requirements and Strategies for Use June 2013

Table of Contents 2 Overview of Patent Prosecution Highway Overview of PCT – PPH …………………… Countries and Patent Offices Participating Revised Requirements for the Patent Prosecution Highway … Example Situations to Apply PPH

Overview of Patent Prosecution Highway (PPH) 3 Under the Patent Prosecution Highway: Applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track examination of corresponding claims in corresponding applications filed in the OSF. Expedites examination process for corresponding applications filed in participating countries by allowing examiners to reuse search and examination results. All claims in the OSF application must sufficiently correspond to the allowable claims in the OFF application.

Overview of Patent Prosecution Highway (PPH) 4 PPH Benefits: Examination within two or three months from the grant of the PPH request provided the application has completed all its pre-exam processing and is ready for examination. More than 90% of PPH cases are allowed. For non-PPH cases, the allowance rate is less than 50%. PPH cases have fewer actions per disposal when compared to non-PPH cases on average, saving both applicants and Patent Offices time and expense. PPH enables applications filed in multiple jurisdictions to be fast tracked based on another Offices work product Petition Fee was eliminated in May 2010, making PPH even more cost effective. Potential for less prosecution history estoppel as a result of fewer office actions and responses.

Overview of PCT-PPH 5 The PPH program has been expanded to permit eligibility for national and regional phase applications under the Patent Cooperation Treaty (PCT) on the basis of positive results in the PCT international phase. In this program, an applicant receiving a favorable Written Opinion or International Preliminary Report on Patentability from one of the participating Offices acting as an International Authority may request that a corresponding national phase entry or a national application filed at the USPTO receive fast- track examination.

Countries and Patent Offices Participating 6

Revised Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with the Korean Intellectual Property Office 7 I. Background Since July 15, 2011, the United States Patent and Trademark Office (USPTO) and seven other offices (i.e., IP Australia (IPAU), Canada (CIPO), Finland (NBPR), Japan (JPO), Russia (ROSPATENT), Spain (SPTO) and United Kingdom (UKIPO)) have participated in an enhanced PPH pilot program called MOTTAINAI. Under MOTTAINAI, participation in the PPH may be requested on the basis of search and examination results from any patent family application from any participating office, regardless of whether the participating office was the office of first filing. To implement the MOTTAINAI pilot, the USPTO revised its PPH requirements. See, for example, the notice available at On January 29, 2012, the USPTO implemented PPH 2.0 with respect to the seven MOTTAINAI participating offices and the European Patent Office (EPO) to further enhance the PPH program and to encourage greater usage The revised requirements for PPH 2.0 commenced with respect to the KIPO on January 29, 2013, and will terminate on January 28, The revised requirements will apply to PPH requests filed at the USPTO on or after January 29, 2013, based on claims that have been determined allowable in a corresponding application filed in the KIPO. and supersede the PPH notices to implement the prior PPH program between the USPTO and the KIPO. The USPTO and KIPO will evaluate the results to determine whether to continue the program, although it may be terminated early under certain conditions. As of January 29, 2013, the PPH 2.0 participating offices are IPAU, CIPO, EPO, NBPR, JPO, ROSPATENT, SPTO, UKIPO, the Portugal National Institute of Industrial Property (INPI-PT), and KIPO with respect to applications filed in the USPTO.

Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO 8 In order to be eligible to participate in the PPH 2.0 program at the USPTO, the following conditions must be met: 1) At least one claim was determined by the PPH 2.0 participating office to be allowable/patentable. No longer need to submit a copy of the allowed claims from the application filed in the PPH 2.0 participating office or any English translation thereof. 2) The U.S. application and the corresponding application filed in the PPH 2.0 participating office (with the allowable/patentable claim(s)) must have the same priority/filing date. In particular, the U.S. application (including national stage entry of a PCT application and a so-called bypass application filed under 35 U.S.C. § 111(a) which validly claims benefit under 35 U.S.C. § 120 to a PCT application): Case I – is an application that validly claims priority under 35 U.S.C. § 119(a) and 37 CFR 1.55 to one or more applications filed with the PPH 2.0 participating office (examples are provided in the ANNEX, Figures A, B, C and D), or Case II – is an application which is the basis of a valid priority claim under the Paris Convention for the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures E, F and G), or Case III – is an application which shares a common priority document with the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures H, I, J, K, L, M and N), or Case IV – and the application filed in the PPH 2.0 participating office are derived from/related to a PCT application having no priority claim (example is provided in the ANNEX, Figure O). Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH 2.0 program.

Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO 9 3) All claims on file, as originally filed or as amended, for examination under the PPH 2.0 program in the U.S. application must sufficiently correspond to one or more of those claims indicated as allowable in the application filed in the PPH 2.0 participating office. "Sufficiently corresponds" means, where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. A claim in U.S. application narrower in scope than the claims indicated as allowable in the application filed in the PPH 2.0 participating office will also sufficiently correspond if presented as a claim dependent upon a claim which is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. The additional limitation that makes the claim in the U.S. application narrower in scope than the allowable or patentable claims in the application filed in the PPH 2.0 participating office must have support in written description of the U.S. application. A claim in the U.S. application which introduces a new or different category of claims to those claims indicated as allowable in the application filed in the PPH 2.0 participating office is not considered to sufficiently correspond. For example, if the only allowable or patentable claims in the application filed in the PPH 2.0 participating office are claims to a process of manufacturing a product, then any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims which sufficiently correspond to allowable or patentable claims in the application filed in the PPH 2.0 participating office. A claims correspondence table in English must be submitted which indicates how all the claims in the U.S. application correspond to the allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. Any dependent claims with additional limitations must be clearly identified in the claims correspondence table.

Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO 10 4) Substantive examination of the U.S. application for which participation in the PPH 2.0 program is requested cannot have begun. 5) The applicant must file a request for participation in the PPH 2.0 program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). Examples of forms to use are (for Korea) and (for Japan). Once the PPH is filed, the PPH request is generally decided within 2 months from filing the request. If granted, the examiner will generally examine the application within 2 or 3 months from grant of request, provided application has completed all pre-exam processing and is ready for examination.

Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO 11 6) Need to submit copy of office action issued just prior to the Decision to Grant a Patent (e.g., the latest Notification of Reasons for Refusal) from each of the application(s) filed in the PPH 2.0 participating office containing the allowable or patentable claims that form the basis for the request, along with an English translation (may be a machine translation) thereof. The applicant no longer needs to provide a statement that the English translation is accurate. Not necessary to submit a copy of the Decision to Grant a Patent and an English translation thereof. If the application filed in the PPH 2.0 participating office is a first action allowance, the applicant should indicate on the request form that no office action from the application filed in the PPH 2.0 participating office is submitted since the application was a first action allowance. If the copy of the office action (along with an English translation thereof – machine translation permitted) from the application filed in the PPH 2.0 participating office is available via the dossier access system, the applicant may request that the USPTO obtain such a copy of the office action (along with the English translation) via the dossier access system. If the USPTO is not able to obtain a copy of the office action (along with the English translation) via the dossier access system, the applicant will be notified and given an opportunity to submit a copy of the office action (along with the English translation) from the application filed in the PPH 2.0 participating office. If the USPTO finds the machine translation (submitted by the applicant or obtained by the USPTO via the dossier access system) is of such poor quality that it is difficult to understand, applicant may be required by the USPTO to submit a manual translation into the English language of the office action. The applicant must submit copies of any office actions (which are relevant to patentability) from the application(s) filed in the PPH 2.0 participating office issued after the grant of the request for participation in the PPH 2.0 program in the USPTO (especially where the PPH 2.0 participating office might have reversed a prior holding of allowability).

Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO 12 7) The applicant must submit an information disclosure statement (IDS) listing the documents cited in the office action of the PPH 2.0 participating office (unless such an IDS has already been filed in the U.S. application). The applicant must submit copies of all the documents cited in the office action of the PPH 2.0 participating office (unless the copies have already been filed in the U.S. application) except U.S. patents or U.S. patent application publications. The request for participation in the PPH 2.0 program and all the supporting documents must be submitted to the USPTO via EFS-Web. Where the request for participation in the PPH 2.0 program and special status are granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. If the request is not granted, the applicant will be given one opportunity to perfect the request in a renewed request for participation 8) Request for participation in the PPH 2.0 program and special status granted in a parent application will not carry over to a continuing application. Once the request for participation in the PPH 2.0 program and special status have been granted to the U.S. application, the U.S. application will be taken up for examination before all other categories of applications except those clearly in condition for allowance, those with set time limits, such as examiners answers, and those that have been granted special status for accelerated examination. Any claims amended or added after the grant of the request for participation in the PPH 2.0 program must sufficiently correspond to one or more allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. The applicant is required to submit, along with the amendment, a statement certifying that the amended or newly added claims sufficiently correspond to the allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. If the certification statement is omitted, the amendment will not be entered and will be treated as a non-responsive reply.

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