By Donald Zuhn —

USPTO Modifies PKI
Subscriber Agreement

On February 11, the U.S.
Patent and Trademark Office distributed a Patents Alert e-mail in which the
Office noted that the Public Key Infrastructure ("PKI") Subscriber
Agreement had been modified such that PKI certificate holders are strictly
prohibited from using Private PAIR to access any nonpublic patent application
or documents owned by another, absent specific authorization.  In particular, the PKI Subscriber Agreement
states that:

Any inadvertent or other disclosure of
nonpublic documents shall in no way be construed as authorized access to such
documents. Disclosure of other’s nonpublic documents constitutes involuntary
unauthorized access and I understand that I must immediately destroy all such material
without dissemination to anyone else, retrieve and destroy any such material if
disseminated, notify the USPTO of the nature and extent of the unauthorized
use, and certify that I have destroyed such material, that I have not granted
rights to others to access such material, and that I will not otherwise make
use of such material.

The Agreement also states
that the Office may immediately revoke PKI certificates at any time without
prior notice if, inter alia, "there
is unauthorized use such as attempting or gaining access to nonpublic
information or inadvertently disclosed nonpublic information," a PKI
holder "use[s] Private PAIR to view another applicant's unpublished application
without authorization," or the PKI holder "refuse[s] to destroy,
cease dissemination, and/or retrieve any dissemination of any inadvertently
disclosed or other nonpublic documents."

The Office's e-mail
indicated that continued use of the system following the posting of the notice constituted
agreement to the updated terms.  The new
version of the PKI Subscriber Agreement can be found here.

The changes in the PKI
Subscriber Agreement are likely related to an issue with the Private PAIR system
between September 15-19, 2012.  In
response, the USPTO issued Notices of Erroneous Access to Certain Patent
Application Information Between September 15 and
September 19, 2012 to applicants whose applications were erroneously
accessed.  The Notices stated, in part:

Between September 15, 2012 and September 19,
2012, registered users of the Private Patent Application Information Retrieval
(PAIR) system were able to access certain data regarding unpublished applications
other than their own.  This unauthorized
access was caused by a software error that was corrected on September 19, 2012,
the day it was detected.  The United
States Patent and Trademark Office (USPTO) immediately fixed the problem,
quickly identified and addressed its root cause, and is putting measures in
place to prevent future occurrences and notifying the affected applicants.  The USPTO takes the security of our IT
systems very seriously, and this letter reports the results of our ongoing
investigation.

USPTO Upgrades to PPH 2.0 with
KIPO and INPI-PT

In February 2012, the U.S.
Patent and Trademark Office implemented a new version of the enhanced Patent
Prosecution Highway (PPH) pilot program known as PPH MOTTAINAI.  Under the new version of the PPH MOTTAINAI
program — known as PPH 2.0 — the European Patent Office (EPO) joined the
original seven MOTTAINAI 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) — to bring the total number of participating offices at that time to
nine.

On February 12, the USPTO
announced that the Office had implemented PPH 2.0 programs with both the Korean
Intellectual Property Office (KIPO) and the Portugal National Institute of Industrial
Property (INPI-PT), with each program commencing on January 29.  The PPH 2.0 program with KIPO supersedes the
prior PPH program with that office, but does not affect the USPTO-KIPO PCT-PPH
program.

In order to participate in any
of the PPH 2.0 programs in the USPTO, applicants must satisfy the following
requirements:

1.  One of the other
PPH 2.0 participating offices has determined that at least one claim is
allowable/patentable (under the PPH 2.0 program, applicants no longer need to
submit a copy of the allowed claim or any English translation thereof).

2.  The application
before the PPH 2.0 participating office (i.e., containing the
allowable/patentable claim) and the U.S. application for which participation in
the PPH 2.0 program is being requested must have the same priority/filing date
(the Annex to the USPTO's notice on the PPH 2.0 program provides fifteen
schematics outlining situations in which this requirement would be satisfied).

3.  All claims on
file, as originally filed, or as amended in the U.S. application must
sufficiently correspond to one or more of the claims indicated as allowable in
the application filed in the PPH 2.0 participating office (the USPTO notice
states that "[a] claim is considered to 'sufficiently correspond' where,
accounting for differences due to translations and claim format, the claim in
the U.S. application is of the same or similar scope as a claim indicated as
allowable in the application filed in the PPH 2.0 participating
office").  Under the PPH 2.0 program, applicants must submit a claims
correspondence table (in English), indicating how all the claims in the U.S.
application correspond to the allowable/patentable claims in the application
filed in the PPH 2.0 participating office.

4.  Examination of the
U.S. application for which participation in the PPH 2.0 program is being
requested has not yet begun.

5.  The applicant has
filed a request to participate in the PPH 2.0 program.

6.  The applicant must
submit a copy of the office action issued just prior to the "Decision to
Grant a Patent" (along with an English translation, which may be a machine
translation) for the application before the PPH 2.0 participating office (under
the PPH 2.0 program, applicants no longer need to submit a statement that the
English translation is accurate).

7.  The applicant must
submit an information disclosure statement listing all documents cited in the
office action of the PPH 2.0 participating office.

8.  All of the
documents described above must be filed via the EFS-Web and indexed using the
document description:  "Petition to make special under Patent Pros
Hwy."

Additional information
regarding the PPH 2.0 program with KIPO can be found here,
and with INPI-PT can be found here.

USPTO Implements PCT-PPH
with INPI-PT

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) by one with the announcement
that the Office was establishing a PPH pilot program based on Patent
Cooperation Treaty (PCT) work products (PCT-PPH) with the Portugal National
Institute of Industrial Property (INPI-PT).

Under the USPTO-INPI-PT PCT-PPH,
which went into effect on January 29, an applicant receiving a positive written
opinion or a positive international preliminary report in a PCT application
where the USPTO or INPI-PT 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-INPI-PT PCT-PPH
pilot program is scheduled to expire on January 28, 2014, but may be extended
if necessary to adequately assess the feasibility of the program.