INVENTIVE STEP

The United States PTO has entered into an agreement with 15 other patent offices called the Patent Prosecution Highway.  This program is intended to permit the sharing of information and resources between patent offices in various countries in an effort to accelerate patent examination, and presumably increase patent quality, by reducing redundancies in the examination process.

Under this program, the applicant files a patent application in one country, usually the country where the inventor or assignee is located, and then files additional applications in other countries claiming priority to the first-filed application.  Once a patent claim is found to be allowable by the patent office where the application was first filed, the applicant may request that other patent offices fast track examination of the application.  Usually this means that the application will be taken up out of turn and moved near the front of the examination line.  This is a type of work-sharing program intended to reduce redundancy in examination.

The PTO originally required a petition fee for this program; as an incentive for more applicants to use the procedure, the fee was eliminated last year.

The PTO has also instituted pilot programs for trilateral accelerated examination with several countries.  This program permits applicants who receive a positive written opinion or international preliminary examination report issued by the USPTO or the other pilot program country stating that at least one claim meets the requirements of novelty, inventive step, and industrial applicability, to have the opportunity to accelerate examination of the application in the USPTO or the other pilot program country.  These pilot programs are scheduled to run for the next year or two but should be renewed.

The US has PPH agreements with the following countries:

Australia
Austria
Canada
Denmark
EPO
Finland
Germany
Hungary
Japan
Korea
Mexico
Russia
Singapore
Spain
United Kingdom

The PTO has PCT pilot programs with the following countries (expiration date):

Australia (April 13, 2012)
Austria (September 30, 2011)
EPO (January 28, 2012)
Finland (January 23, 2013)
Japan (January 28, 2012)
Korea (May 31, 2012)
Russia (September 30, 2011)
Spain (September 30, 2011)

For applicants that plan to file or have filed in any of these countries, the ability to accelerate examination in later-filed offices can be a significant advantage and should be seriously considered.

This entry was posted on May 11, 2011 at 11:46 am and is filed under Patent Strategies, US Patent & Trademark Office. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.