By Christopher P. Singer —

In a memorandum dated September 22, 2008, the U.S. Patent and Trademark Office announced that it and the European Patent Office (EPO) have agreed to enter a pilot Patent Prosecution Highway (PPH) program, effective September 29, 2008, for a term of one year.  The addition of the EPO program makes a total of six active PPH programs (either permanent or pilot) in which the USPTO participates (including programs with Japanese, Canadian, Australian, Korean, and U.K. patent offices).  The exception in the European PPH program is that International (PCT) applications are excluded from participation.  Additional requirements for participation in the PPH program can be found at the EPO website (www.epo.org) or the USPTO website (www.uspto.gov), or in the USPTO Notice.

Briefly, the Notice lists several requirements for applications to be eligible to participate in the PPH pilot program, including:

(1)  The U.S. application is a Paris Convention application validly claiming priority under 35 U.S.C. § 119(a) and 37 C.F.R. § 1.55 to one or more applications filed in the EPO.

(2)  The EPO application(s) have at least one claim that was determined by the EPO to be allowable and Applicant must submit a copy of the allowable claims from the EPO application(s).

(3)  All the claims must sufficiently correspond or be amended to sufficiently correspond to the allowable claims in the EPO application(s).

(4)  Examination of the U.S. application for which participation in the PPH pilot program is requested has not begun.

(5)  Applicant must file a request for participation in the PPH pilot program and a petition to make the U.S. application special under the PPH pilot program (sample form PTO/SB/20EP to be made available from the USPTO website on September 29, 2008).

(6)  Applicant must submit a copy of all the Office actions relevant to patentability from each of the EPO application(s) containing the allowable claims that are the basis for the request.

(7)  Applicant must submit an Information Disclosure Statement (IDS) listing the documents cited by the EPO examiner in the EPO Office action, unless an IDS citing those references has already been filed in the U.S. application.

Questions concerning the Notice or the PPH program can be directed to Magdalen Greenlief, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-8800 or at magdalen.greenlief@uspto.gov.