By Donald Zuhn —

A colleague pointed out today that the U.S. Patent and Trademark Office has apparently begun to restrict the ability of users to make bulk downloads from Public PAIR.  While we have not noticed any recent download restrictions in our own use of PAIR, our colleague indicated that attempts to download an entire file history (sans non-patent literature (NLP) documents) via Public PAIR had failed, and that subsequent attempts to download only portions of the file history had also failed.

Our colleague also indicated that the Office's Patent Application Information Retrieval (PAIR) system appears to throttle users down progressively.  For example, our colleague noted that at first he could download twenty documents at a time, but the system reduced that number to ten documents and then reduced the number again to five documents.  Contacting the Office's Patent Electronic Business Center (EBC), our colleague was informed that the Office does "limit bandwidth and will shut groups down completely if they exceed the data download limits for our system."  The EBC agent also noted that "Public/Private PAIR was never designed to be used to download bulk data," and that the EBC had a service for bulk downloads.  Most disconcerting was the agent's warning that if a user exceeded the Office's data download limits (whatever those might be), the system would "give[] you a specific error and you would not be able to download anything at that point" (to which our colleague suggested that this might pose a real problem if a user was precluded from downloading anything at all from PAIR).

The bulk download service to which the EBC agent was referring is described on the Office's Electronic Bulk Data Products webpage.  There, the Office notes that it entered into a no-cost agreement with Reed Technology Information Services (RTIS) in June 2013 "to make patent and trademark public bulk data more readily available to the public free of charge."  The Office also notes that "Reed Tech is also continuing work on a special data product consisting of Public PAIR (Patent Application Information Retrieval) data, which is not currently available from the USPTO in bulk form."  Reed Tech's Public PAIR bulk patent data can be accessed here.

Our colleague pointed out two issues with Reed Tech's service.  First, not all applications are available for download, and second, the slow-downloading .zip file provided by Reed Tech contains a separate .pdf file for every document in the file history.

While the download restrictions were news to Patent Docs, a check of the Office's PAIR FAQs webpage suggests that the limits may not be an entirely new development.  In particular, that webpage includes one FAQ on point:

Does PAIR limit Image File Wrapper (IFW) downloads?
To maintain general availability of USPTO information and services provided on the Internet, any activity or operation by a third party that has the potential to cause a denial or diminution (decrease) of services to other customers, whether generated automatically or manually, will result in the Office's denying access to the Office Internet resources to that third party.

Patent Docs is interested in hearing from readers as to whether they have experienced problems making bulk downloads from either Private or Public PAIR.

By Donald Zuhn —

Following the implementation of its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) in 2006, the U.S. Patent and Trademark Office proceeded to establish PPH programs with nearly thirty other patent offices over the next seven years.  The PPH enables applicants who receive a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office.  Last year, the USPTO announced the implementation of two new pilot PPH programs — the Global PPH and IP5 PPH –- which the Office indicated would simplify access to participating PPH offices.  In moving to the Global/IP5 programs, the USPTO noted that the administration of multiple PPH programs with so many other offices, each having its own particular requirements, had become increasingly cumbersome.

For twenty of the patent offices that once participated in individual PPH programs with the USPTO, the two pilot programs replaced existing forms and procedures that were unique to each PPH country pairing, with one form and common rules for participating countries.  Because the USPTO elected to participate in both programs, the Office noted that a PPH request could be filed with the USPTO based on the work product of any office participating in either pilot program.  In addition, because the requirements for participation in both programs are equivalent, USPTO applicants need not specify which pilot program is being utilized (in fact, the Office provided a single form — PTO/SB/20GLBL — for use in requesting participation in either program).

The Global PPH and IP5 PPH pilot programs are substantially identical, differing only with regard to the participating offices in each program.  The twenty-one offices participating in the Global/IP5 programs are IP Australia (IP AU), the Austrian Patent Office (APO), the Canadian Intellectual Property Office (CIPO), China's State Intellectual Property Office (SIPO), the Danish Patent and Trademark Office (DKPTO), the European Patent Office (EPO), the National Board of Patents and Registration of Finland (NBPR), 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 Nordic Patent Institute (NPI), the Norwegian Industrial Property Office (NIPO), the Portugal National Institute of Industrial Property (INPI-PT), 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), Swedish Patent and Registration Office (PRV), the United Kingdom Intellectual Property Office (UK IPO), and the United States Patent and Trademark Office (USPTO).  The IP5 offices are the EPO, JPO, KIPO, SIPO, and USPTO.

In order to participate in the Global/IP5 PPH programs, USPTO applicants must meet the following requirements:

(1) The U.S. application for which participation in either program is requested must have the same priority date or filing date as that of a corresponding national or regional application filed with another participating office, or a corresponding PCT application for which a participating office was the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA).

(2) The corresponding application has at least one claim indicated by the office of earlier examination (OEE) to be allowable/patentable.

(3) All claims in the U.S. application for which participation in either program is requested must sufficiently correspond to the allowable/patentable claims in the corresponding OEE application.

(4) Substantive examination of the U.S. application for which participation in either program is requested has not begun.

A more comprehensive discussion of the requirements for participation in the Global/IP5 programs can be found here.

To participate in the Global/IP5 pilot programs, a USPTO applicant must submit the following via the EFS-Web:

(1) A request for participation in either program and a request that the U.S. application be advanced out of tum for examination by order of the Director.

(2) A claims correspondence table in English, indicating how and certifying that all the claims in the U.S. application correspond to allowable/patentable claims in the OEE application.

(3) A copy of the office action issued just prior to decision to grant in the OEE national/regional application, along with an English translation thereof (if necessary), or the latest work product in the international phase of the OEE PCT application.

(4) An information disclosure statement (IDS) listing the documents cited in the office action or PCT work product submitted for item 3 along with copies of all documents except U.S. patents and U.S. patent application publications.

Separate PPH programs with the USPTO remain in place for nine other offices that are not participating in the Global/IP5 programs:  the Colombian Superintendence of Industry and Commerce (SIC), the Industrial Property Office of the Czech Republic (IPOCZ), the German Patent and Trade Mark Office (DPMA), the Mexican Institute of Industrial Property (IMPI), the Nicaraguan Registry of Intellectual Property (NRIP), the Intellectual Property Office of the Philippines (IPOPHL), the Patent Office of the Republic of Poland (UPRP), the Romanian State Office for Inventions and Trademarks (OSIM), and the Taiwan Intellectual Property Office (TIPO).

Additional information regarding the Global/IP5 PPH and separate PPH programs, including links to the appropriate request forms, can be found here.