By Donald Zuhn —

Since implementing its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) on July 3, 2006, the U.S. Patent and Trademark Office has established a total of nineteen PPH programs with other patent offices.  Currently the USPTO has PPH programs (full or pilot) in place with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), IP Australia (IP AU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the Intellectual Property Office of Singapore (IPOS), the German Patent and Trade Mark Office (DPMA), the National Board of Patents and Registration of Finland (NBPR), the Hungarian Patent Office (HPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), the Mexican Institute of Industrial Property (IMPI), the Swedish Patent and Registration Office (PRV), Nordic Patent Institute (NPI), and the Israel Patent Office (ILPO), and the Taiwan Intellectual Property Office (TIPO).

Last week, the USPTO announced the continuation of current PPH pilot programs based on Patent Cooperation Treaty (PCT) work products (PCT-PPH) with the Spanish Patent and Trademark Office (SPTO) (see notice), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT) (see notice), and the Austrian Patent Office (APO) (see notice).  Under the PCT-PPH framework, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the SPTO, ROSPATENT, or APO was the International Searching Authority or the International Preliminary Examination Authority may request that the USPTO fast track the examination of corresponding claims in the corresponding U.S. application.  All three pilot programs were extended in order to collect more information before any formal decision on any of the programs is made; the program with the SPTO was extended until to September 30, 2013 and the other two programs were extended for an unspecified period.

The USPTO also announced last week that it was extending the PPH pilot program with the APO.  The PPH pilot program permits an applicant having an application whose claims have been allowed in the APO to fast track the examination of an application in the USPTO, or vice versa, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from the USPTO (or the APO) that at least one claim in an application is patentable may request that the APO (or USPTO) fast track the examination of corresponding claims in the corresponding application in that office.  According to a notice regarding the extension of the USPTO-APO PPH, both offices have agreed to continue the pilot program (for an unspecified period of time) in its current state in order to collect more information before any formal decision on the program is made.