2. The INPI-USPTO Patent Prosecution Highway Pilot Program
Jesus J. Hernandez
Patent Attorney
Office of Policy and International Affairs
Seminario Sobre Projeto Piloto de Exame Copartlhado Prioritario
São Paulo, Brazil
May 25, 2016

3. Agenda
Background 7 @
PPH in the US P
Moving Forward

4. Background

5. Presidential Visit: June 30, 2015
The United States and Brazil agreed to expand economic cooperation by
aligning regulatory standards and
developing single window systems to facilitate trade,
launch a work sharing program on patent applications, and
expand infrastructure investment opportunities for both countries.

6. US-Brazil Joint Statement on Patent Work-Sharing
Official title: Joint Statement Between the Government of the US and the Government of the Federative Republic of Brazil on Patent Work Sharing between Patent Offices
Signed by: MDIC Minister Armando Monteiro Neto, and Secretary of Commerce Penny Pritzker
Recognizes:
that patent work sharing may serve as a driving force for improving patent quality and facilitating the examination of patent application
Acknowledges that patent work-sharing arrangements may contribute to promotion of innovation and investment

7. Patent Prosecution Highway Pilot Program Bringing PPH into Fruition
Announcement and Reception

8. Patent Prosecution Highway Pilot Program Bringing PPH into Fruition
Implementation:
Staff at both Offices Make official Publications announcing the program
INPI: Revista da Propriedade Industrial
USPTO: Official Gazette
Dedicated Websites Go live for both offices
Launch: January 11, 2016.

9. PPH in the US

10. What is PPH?
PPH is a system of work sharing that improves examination efficiency by reducing duplication of effort among patent offices.
PPH enables an applicant who has received a determination of allowable claims from one office to obtain fast track processing of corresponding claims in other offices.
PPH MOTTAINAI/2.0 (Improvement on the Original Framework):
PPH MOTTAINAI/2.0:
Eligibility based on available work from a participating office on a patent family member, regardless of order of filing (Office of Earlier Examination -> Office of Later Examination)
Applicant self-certification of claims correspondence
Examiner use of electronic dossier systems, where available

11. PPH modalities PPH Modalities Original "Paris" PPH Framework
When an applicant receives a ruling from a first office that at least one claim in their application is allowable, the applicant can request to enter the PPH program in a second office (Office of First Filing -> Office of Second Filing)
PPH MOTTAINAI:
Eligibility based on available work from a participating office on a patent family member, regardless of order of filing (Office of Earlier Examination -> Office of Later Examination)
Patent Cooperation Treaty (PCT) PPH
PCT work product from an patent office acting as a International Searching Authority (ISA) or International Preliminary Examination Authority(IPEA)
Global/IP5 PPH
Multilateral PPH encompassing PPH Mottainai and PPH PCT in a single collaborative framewor.
PPH MOTTAINAI/2.0 (Improvement on the Original Framework):
PPH MOTTAINAI/2.0:
Eligibility based on available work from a participating office on a patent family member, regardless of order of filing (Office of Earlier Examination -> Office of Later Examination)
Applicant self-certification of claims correspondence
Examiner use of electronic dossier systems, where available

12. USPTO PPH Agreements: Global PPH

13. USPTO PPH Agreements: IP5 PPH
United States Patent and Trademark Office (USPTO)
European Patent Office (EPO)
Japan Patent Office (JPO)
Korean Intellectual Property Office (KIPO)
State Intellectual Property Office of the People’s Republic of China (SIPO)

14. USPTO PPH Agreements: Bilateral PPH

15. Number of Examiner Actions Needed to Complete Prosecution at the USPTO
Cases completed between January and June 2014
Fraction of Applications

16. Terminal Disposal Comparison between PPH and Non-PPH Prosecution
Percent of Applications with at least one RCE*
Reduced Appeal Rates*
Overall Allowance Rate**
First Action Allowance Rate***
PPH Applications
12%
0.3%
82.3%
23%
Non-PPH Applications
25%
2.5%
68.3%
13%
Examiner Actions include restrictions, non-final rejection, final rejection, ex parte Quayle, allowance, Interference, SIR disposal, Rule 105 requirement, examiner’s answer, advisory action, miscellaneous action with SSP, first action interview actions, examiner initiated suspension and abandonment after PTAB decision * Cases completed in CY 2013
** Cases completed between January and June 2014
*** Cases completed between July and December 2014 7

17. The USPTO-INPI PPH Aspects of Pilot Program
Things to Consider:
PPH at USPTO:
Technology neutral
No limitations on filing dates
No limitations on patent family
PPH at INPI:
Limited to oil and gas technologies
Limited to applications filed at INPI as of January 1, 2013
Limited to “applications in the same family” as defined by INPI

18. The USPTO-INPI PPH Aspects of Pilot Program
Anticipated Drivers for Filing PPH in USPTO
Clean Energy Pilot Program
INPI Prioridade Brazil Pilot Program
Other accelerated examination programs at INPI (startup financing, etc.)

19. Patent Prosecution Highway Pilot Program Bringing PPH into Fruition
PPH Website for PPH Information:

20. Patent Prosecution Highway Pilot Program Bringing PPH into Fruition
PPH Website for PPH Information:

21. Patent Prosecution Highway Pilot Program Bringing PPH into Fruition
Dedicated USPTO-INPI PPH site includes links to:
Original MOU text
Official Gazette Announcement
USPTO Petition Form
INPI’s Resource page

22. Filing a PPH Petition in the USPTO USPTO Form
Streamlining PPH Processing by Using Common Format
PPH MOTTAINAI/2.0 (Improvement on the Original Framework):
PPH MOTTAINAI/2.0:
Eligibility based on available work from a participating office on a patent family member, regardless of order of filing (Office of Earlier Examination -> Office of Later Examination)
Applicant self-certification of claims correspondence
Examiner use of electronic dossier systems, where available

23. Filing a PPH Petition in the USPTO
What does the new PPH Form Request from Applicants?
Identifying Information about the Counterpart INPI Application
Most Recent INPI Action
A List of Prior Art cited by INPI
Copies of all prior art that is not a US patent or patent application
A listing of claims correspondence between INPI and USPTO applications and how they correspond with each other.

24. Moving Forward

25. Notable Patenting Metrics
*Data from: IP5 Statistics, available at

26. Notable Patenting Metrics
US Patent Applications v. EPO Patent Applications of Brazilian Origins
*Data from: IP5 Statistics, available at

27. Notable Patenting Metrics
US Applications/Patents with a Named Inventor from Brazil
* Data from USPTO Office of Patent Information Management, as of 5/20/16
** Filing Data includes Serialized and RCE applications

28. Notable Patenting Metrics
Rank
First-Named Owner (Assignee) 1
~INDIVIDUALLY OWNED PATENT 2
PETROLEO BRASILEIRO S.A. PETROBRAS 3
WHIRLPOOL S.A. 4
EMBRAER - EMPRESA BRASILEIRA DE AERONAUTICA S.A. 5
VALE S.A. 6
NATURA COSMETICOS S/A 7
TYCO ELECTRONICS BRASIL LTDA. 8
RHODIA POLIAMIDA E ESPECIALIDADES LTDA 9
BRASILATA S/A. EMBALAGENS METALICAS 10
BRASKEM S.A. 11
EMPRESA BRASILEIRA DE PESQUISA AGROPECUARIA - EMBRAPA 12
ELECTROLUX DO BRASIL S/A 13
UNIVERSIDADE FEDERAL DE MINAS GERAIS
Recipients of 5 or More Utility Patents from Brazil,
* Data from USPTO Office of Patent Information Management, as of 5/20/16

29. Notable Patenting Metrics
Top US Classes for Applications of Brazilian Origin - IPC
2014 #
Classification 40
A61-MEDICAL OR VETERINARY SCIENCE; HYGIENE 39
G06 - COMPUTING; CALCULATING; COUNTING 20
H04 - ELECTRIC COMMUNICATION TECHNIQUE
2013 #
Classification 35
A61-MEDICAL OR VETERINARY SCIENCE; HYGIENE 26
G06 - COMPUTING; CALCULATING; COUNTING 13
C07 - ORGANIC CHEMISTRY
F16 - FLUID-PRESSURE ACTUATORS; HYDRAULICS OR PNEUMATICS IN GENERAL
*Data from: IP5 Statistics, available at
2012 #
Classification 32
A61-MEDICAL OR VETERINARY SCIENCE; HYGIENE 16
G06 - COMPUTING; CALCULATING; COUNTING 10
F16 - FLUID-PRESSURE ACTUATORS; HYDRAULICS OR PNEUMATICS IN GENERAL
A61
Medical Devices: Dentistry, Diagnosis, Conveyances for Disabled Persons, implantable/srcuival devices, Veterinary sciences, physical therapy,
G06 - simulating conditions on cmputers, image processing, computing function of an apparatus or a system

30. Notable Patenting Metrics
Top Technology Classes - USPC/Aggregate
Class
Class Title
2011
2012
2013
2014
2015
Total
424
Drug, Bio-Affecting and Body Treating Compositions (includes Class 514) 9 15 22 24 92
532
Organic Compounds (includes Classes ) 10 6 13 8 47
417
Pumps 7 5 11 39
800
Multicellular Living Organisms and Unmodified Parts Thereof and Related Processes 2 3 21 36
162
Paper Making and Fiber Liberation 14 1 29
244
Aeronautics and Astronautics 4 25
128
Surgery (includes Class 600)
* Patent origin is determined by the residence of the first-named inventor. Technology class is determined by the primary classification assigned to a patent. Some classes have been combined together under a single class identifier. Please note that the U.S. Patent and Trademark Office has transitioned from the U.S. Patent Classification System (USPC) to the Cooperative Patent Classification System (CPC) and that USPC classifications generally are no longer available for U.S. utility patents that issued after early June, Therefore, in this report, USPC classifications for utility patents issuing after early June 2015 have been determined as a best estimate based on USPC classifications that were assigned to the associated patent applications during early processing stages and based on other information, as available.

31. For more Information on PPH
For general information concerning PPH, visit
If you have specific questions about PPH, please
To receive future USPTO updates on PPH, sign up for USPTO’s e-Commerce e-Alerts by visiting:

32. Thank You! Jesus J. Hernandez Patent Attorney
Office of Policy and International Affairs