Anyone who in recent years has filed a patent application in the United States of America (or other countries that examine the patentability of inventions such as Canada and Japan), would probably express some dissatisfaction regarding the time taken for a patent to be granted. In fact, some writers have likened the extended delays to time spent in purgatory. There is no question that the backlog of pending patent applications at the United States Patent and Trademark Office (USPTO) has indeed progressed to a critical stage. This situation has been ascribed to a worldwide rise in the number of patent applications being filed and the increasing complexity of inventions, amongst other things.
Over the past few years, in an attempt to alleviate these backlogs, the USPTO has been conducting pilot programs with a number of other intellectual property offices to test the viability of a Patent Prosecution Highway (PPH) Program. The PPH forms part of the USPTO’s 21st Century Strategic Plan to transform the office into a more quality-focused, productive and responsive organisation supporting a market-driven intellectual property system. Under the PPH, an applicant who has received a ruling from an Office of First Filing (OFF) stating that at least one claim in an application is patentable, may request a Office of Second Filing (OSF) to fast-track the examination of the corresponding claims in corresponding applications. This is intended to leverage accelerated examination procedures already available in both offices, thus allowing applicants who have applications pending in these offices to obtain the corresponding patents sooner and more efficiently. The collective goal is to reduce the duplication of examination work, thus speeding up the process and improving patent quality. This is expected to alleviate the examination workload of the respective offices, which in turn will result in patents being granted sooner.
The first PPH pilot program initiated by the USPTO was in conjunction with the Japanese Patent Office (JPO). This program was launched on 3 July 2006 and ended on 3 January 2008. During this period applicants who wished to participate in the program had to file a request and a petition together with the prescribed fee at one of the offices in order for the application to qualify for the PPH pilot program.
The two offices have now decided to implement the PPH program on a permanent basis with effect from 4 January 2008. A notice issued by the USPTO on this decision indicates that the pilot program has proved to be very effective. More specifically, the results of the pilot program showed that:
1. Applicants have been able to obtain a patent at the OSF at an early stage
2. By exploiting the search and examination results of the OFF, the OSF achieved a reduction in the duplication of search efforts
3. The OSF has been able to reduce the examination workload
Jon Dudas, the Under-Secretary of Commerce for Intellectual Property and Director of the USPTO says that the pilot program with the JPO showed that the PPH offers significant potential for both offices to reduce their backlogs, by eliminating redundant work and examining more efficiently.
The USPTO has since launched similar pilot programs with other intellectual property offices, the most recent being with the Canadian Intellectual Property Office (CIPO). The commencement of the pilot program was announced by both the USPTO and the CIPO on 28 January 2008. The pilot program will last for a period of one year ending on 28 January 2009. The period may be extended for up to an additional year if necessary to assess the feasibility of the PPH program adequately. At the same time, the programme may be terminated earlier depending, amongst other factors, on the volume of activity. The two offices will evaluate the results of the pilot program to determine whether the program should be implemented on a full-time basis after the trial period.
There are two further pilot programmes currently in progress with the United Kingdom Intellectual Property Office, launched on 4 September 2007, and the Korean Intellectual Property Office, launched on 28 January 2008. According to a USPTO press release the purpose of the pilot programmes is to gauge the interest of applicants and to determine if the programme improves the quality and efficiency and reduces the workload at the USPTO and the other offices.
In order to participate in the pilot programme applicants must submit a request to the relevant office. Full requirements for participation in the pilot programme at the USPTO can be found at the following links:
www.uspto.gov/web/patents/pph/pph_cipo.html
www.uspto.gov/web/patents/pph/pph_kipo.html
Applicants who have corresponding US and JP patent applications and who wish to have their applications processed under the USPTO – JPO PPH program must file a request with the relevant office. The requirements for requesting participation in the PPH program as well the request form can be obtained at the following link:
http://www.uspto.gov/web/patents/pph/pph_jpo.html
Omphile Modibela
Candidate Attorney
o.modibela@spoor.com