By Donald Zuhn —

Since implementing its
first Patent Prosecution Highway (PPH) program with the Japan Patent Office
(JPO) in 2006, the U.S. Patent and Trademark Office has established close to
forty PPH programs with more than twenty other patent offices.  Earlier this month, the USPTO increased the
number of PPH programs (full or pilot) to 35 with the announcement that the Office was establishing
a PPH pilot program and a PPH pilot program based on Patent Cooperation Treaty
(PCT) work products (PCT-PPH) with the Industrial Property Office of the Czech
Republic (IPOCZ).  The two new pilot
programs, both of which went into effect on October 1, raise the number of
offices with which the USPTO has PPH programs to twenty-four.  The USPTO also announced that additional PPH
programs with the Philippines and Portugal would be implemented in January.

As with other PPH programs,
the USPTO-IPOCZ PPH will permit an applicant having an application whose claims
have been allowed in one of the offices to fast track the examination of an
application in the other office, such that the latter application is examined
out of turn.  In particular, an applicant
receiving a ruling from either the USPTO or IPOCZ that at least one claim in an
application is patentable may request that the other office fast track the
examination of corresponding claims in the corresponding application in that
office.  The USPTO-IPOCZ PPH pilot
program is scheduled to expire on September 30, 2013, but may be extended if
necessary to adequately assess the feasibility of the program.  The USPTO's notice regarding the USPTO-IPOCZ
PPH pilot program, including requirements for participation in the program, can
be found here.

The PCT-PPH pilot program with
the IPOCZ will apply to qualifying patent applications filed under the Patent
Cooperation Treaty (PCT).  Under the
USPTO-IPOCZ PCT-PPH, an applicant receiving a positive written opinion or a
positive international preliminary report in a PCT application where the USPTO
or IPOCZ was the International Searching Authority or the International
Preliminary Examination Authority may request that the other office fast track
the examination of corresponding claims in corresponding applications.  The USPTO-IPOCZ PCT-PPH pilot program is
scheduled to expire on September 30, 2013, but may be extended if necessary to
adequately assess the feasibility of the program.  The USPTO's notice regarding the USPTO-IPOCZ
PCT-PPH pilot program, including requirements for participation in the program,
can be found here.

Last week, the USPTO also
announced
that the Office and seven other patent offices had agreed to indefinitely
extend an enhanced PPH pilot program known as MOTTAINAI.  The enhanced PPH pilot program, which was
first implemented in 2011, derives its name from the Japanese term meaning
"a sense of regret concerning waste when the intrinsic value of an object
or resource is not properly utilized." 
Under MOTTAINAI, eight patent offices — the USPTO, Canadian
Intellectual Property Office (CIPO), Japan Patent Office (JPO), IP Australia
(IPAU), National Board of Patents and Registration of Finland (NBPR), Federal
Service on Intellectual Property, Patents & Trademarks of Russia
(Rospatent), Spanish Patent and Trademark Office (SPTO), and United Kingdom
Intellectual Property Office (UKIPO) — have implemented enhanced PPH programs
in which the requirements for participation have been modified to make the
programs easier to use and more widely available to a greater number of
applicants.  In particular, participation
in MOTTAINAI can be requested on the basis of results available on any patent
family member from any office participating in the pilot, regardless of whether
it was the office where the priority application was filed.  In addition, the enhanced program utilizes a
new definition of claim correspondence, which is intended to make the system
more flexible and user-friendly without compromising efficiency or quality.

In addition, the USPTO announced
the continuation of a current PPH pilot program with the Norwegian Industrial
Property Office (NIPO).  The USPTO-NIPO
PPH program has been extended indefinitely.

With the addition of the
above programs, the USPTO has twenty-two PPH programs (full or pilot) in place
with IP Australia (IP AU), the Austrian Patent Office (APO), the Canadian
Intellectual Property Office (CIPO), China's State Intellectual Property Office
(SIPO), the Colombian Superintendence of Industry and Commerce (SIC), the
Industrial Property Office of the Czech Republic (IPOCZ), the Danish Patent and
Trademark Office (DKPTO), the European Patent Office (EPO), the National Board
of Patents and Registration of Finland (NBPR), the German Patent and Trade Mark
Office (DPMA), the Hungarian Intellectual Property Office (HIPO), the Icelandic
Patent Office (IPO), the Israel Patent Office (ILPO), the Japan Patent Office
(JPO), the Korean Intellectual Property Office (KIPO), the Mexican Institute of
Industrial Property (IMPI), the Norwegian Industrial Property Office (NIPO),
the Russian Federal Service for Intellectual Property, Patents and Trademarks
(ROSPATENT), the Intellectual Property Office of Singapore (IPOS), the Spanish
Patent and Trademark Office (SPTO), the Taiwan Intellectual Property Office
(TIPO), and the United Kingdom Intellectual Property Office (UK IPO).  The USPTO has also established thirteen
PCT-PPH programs with other patent offices: 
IP AU, APO, SIPO, IPOCZ, EPO, NBPR, ILPO, JPO, KIPO, the Nordic Patent
Institute (NPI), ROSPATENT, SPTO, and the Swedish Patent and Registration
Office (PRV).  Additional information
regarding the various PPH and PCT-PPH programs, as well as links to the
appropriate request forms to be used for each program, can be found here.