September 27, 2010

Press Release, 10-45

USPTO Expands the Patent Prosecution Highway to Include Pilots with Austria, Spain and Russia

New pilot projects will promote efficiency and higher quality

Washington - The United States Patent and Trademark Office (USPTO) today announced a series of pilot projects for the Patent Prosecution Highway (PPH) with the Spanish Patent and Trademark Office (SPTO), Austrian Patent Office (APO) and the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent). PPH leverages fast-track patent examination in each office to allow applicants to obtain corresponding patents faster and more efficiently in each country. It also will permit each office to benefit from work previously done by the other office, in turn reducing examination workload and improving patent quality.  

The USPTO plans to start a PPH pilot with both SPTO and APO whereby search and examination results of national applications between cross filings under the Paris Convention are utilized. On September 1, 2010 a similar PPH program with Rospatent was started. The USPTO will also be piloting a PCT-PPH program with each of the three offices. These PCT-PPH pilot programs will use international written opinions, and international preliminary examination reports developed within the framework of the international Patent Cooperation Treaty (PCT) and will greatly expand the availability of reusable work in the PPH program.   

“Patent offices worldwide are recognizing worksharing as the key strategy to combat the growing patent backlogs and increased pendency. These agreements represent a major milestone in the expanding PPH network,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “More users will be able to benefit from quicker patentability determinations and higher quality by employing both the National and PCT work product in the PPH programs.”

Mr. Casado Cerviño, Director of the SPTO, sees the PPH as “a key element in the ‘Plan Л’, which is the plan for promotion of Industrial Property in Spain 2010-2012 and that applies the principles of a smart, sustainable and inclusive growth in the IP sector.  The PPH will help to fight patent backlogs and contribute to the protection of our industry interests abroad. Moreover, the inclusion of the PCT international work products is a valuable achievement for all our stakeholders.”

“The Austrian Patent Office is very pleased to be partner of the USPTO in a pilot program of the Patent Prosecution Highway,” said the President of the Austrian Patent Office, Dr. Roedler. “The PPH initiative is capable of creating a win/win situation for offices involved as well as for applicants by reducing backlogs and pendency time, increasing quality and efficiency of procedures and providing opportunities for our applicants to accelerate their application in key markets. Worksharing in the growing PPH network is an important step to improve the global patent system.”  

Dr. Boris Simonov noted that further development of the PPH Pilot Program by expanding the basic PPH framework to include the PCT international phase work products for work-sharing purposes is an important step for providing significant benefits to the applicants. The PCT application will serve not only as a "bridge" between corresponding national applications, using the International Search Report and other PCT products as a basis for requesting PPH will increase the interaction between the PPH and the PCT, as well as the number of applications that could qualify for the fast track examination under the PPH.

Under the Patent Prosecution Highway, an applicant receiving a ruling from SPTO, Rospatent, or APO that at least one claim in an application is patentable may request that the USPTO fast track the examination of corresponding claims in corresponding applications. Similarly, if the USPTO determines that at least one claim is patentable, the applicant may request accelerated processing of corresponding applications filed at SPTO, APO and Rospatent. Full requirements for participation in each trial program at the USPTO can be found at http://www.uspto.gov/patents/init_events/pph/index.jsp. Information on the Spanish Patent and Trademark office’s PPH program may be found at www.oepm.es. Information on Rospatent’s PPH program may be found at http://www.fips.ru/sitedocs/PPH_US_RU_Eng.pdf

The purpose of these trial programs 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 Spanish Patent and Trademark Office, the Austrian Patent Offices and Rospatent. The trial period will start on October 1, 2010, and is set to expire on September 30, 2011, 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 period.

For non-press inquiries contact Magdalen Greenlief at 571-272-8850 or at Magdalen.Greenlief@uspto.gov.

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