January 18, 2008

The USPTO released a trio of notices this week regarding a specific aspect of its 21st Century Strategic plan, namely a procedure to partner with other intellectual property office to share search results and reduce the duplication of efforts. One particular procedure, the Patent Prosecution Highway (“PPH”), has had noted pilot successes and appears to be quickly expanding.

The first notice pertains to the Canadian Intellectual Property Office (“CIPO”) and its desire to participate in the PPH program. In the notice (link below), details on the pilot PPH program are provided, noting in particular that the initial one year pilot will begin on January 28, 2008. A number of scenarios and corresponding graphs are provided, showing the procedural differences depending on what type of application is filed and when it is filed in relation to each participating country.

The second PPH notice (link below) pertains to the Korean Intellectual Property Office (“KIPO”) and its participation in a pilot PPH program with the USPTO. Similar to the details provided within the CIPO notice, the USPTO/KIPO pilot program will begin on January 28, 2008, will last at least one year, and will have different processes depending upon the type and time an application is filed.

The third notice regarding the PPH relates to the participation of the United Kingdom Intellectual Property Office (“UK IPO”) PPH pilot beginning last September. The USPTO and the UK IPO have agreed to tweak the PPH pilot program, specifically regarding PCT filings and electronic submissions. According to the USPTO/UK IPO notice (link below), both offices “agreed to modify the pilot program to (1) permit certain applications based on PCT filings (where the PCT application does not contain any priority claim) to quality for participation in the PPH pilot program, and (2) require that the request for participation in the PPH pilot program and all the supporting documents be submitted to the USPTO via EFS-Web.” More details on these modifications are provided in the notice itself, noting that the changes also take effect on January 28, 2008.

USPTO CIPO PPH Notice (PDF): LINK
CIPO Website: LINK
USPTO KIPO PPH Notice (PDF): LINK
KIPO Website: LINK
USPTO UK IPO PPH Notice (PDF): LINK
UK IPO Website:LINK
USPTO PPH Website: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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