Patent Prosecution Highway (PPH) User Seminar German Patent and Trademark Office July 22, 2014 Maria T. Holtmann Program Director, International Patent Cooperation United States Patent and Trademark Office
PPH at the USPTO USPTO participates in PPH with 27 Offices Global PPH IP5 PPH Bi-lateral agreements 2
Global and IP5 PPH Offices 3
Global/IP5 PPH Principles Reciprocity Every participating office in Global PPH and IP5 PPH has agreed to accept the work product of any other participating office as the basis for a PPH request. Common Requirements Every participating office has agreed to a common set of requirements to provide applicants with a generally standardized PPH request process. 4
Bilateral PPH Agreements Austrian Patent Office (APO) Colombian Superintendence of Industry and Commerce Colombian Patent and Trademark Office (SIC) Industrial Property Office of the Czech Republic (IPO-CZ) German Patent and Trademark Office (DPMA) Mexican Institute of Industrial Property (IMPI) Nicaraguan Registry of Intellectual Property (NRIP) Intellectual Property Office of the Philippines (IPOPHL) Intellectual Property Office of Singapore (IPOS) Taiwan Intellectual Property Office (TIPO) 5
Benefits to Users and Offices Rapid prosecution Higher grant rates Fast portfolio building Cost Savings!! Helps offices with backlogs, improving the system in general 6
USPTO s PPH Performance Measures Examination Actions per Application Disposal Overall Allowance Rate First Action Allowance Rate Percent of Applications with at least one RCE Non PPH Applications 3 66.3% 12.6% 25% PPH Applications 2.2 83% 36.8% 12% Actions include restrictions, non-final rejection, final rejection, ex parte Quayle, allowance, Interference, SIR disposal, Rule 105 requirement, examiner s answer, advisory action, miscellaneous action with SSP, first action interview actions, examiner initiated suspension and abandonment after PTAB decision 7
PPH Benefits Key factor in cost savings: Fewer office actions Depending on complexity, cost per action ranges from $2,086-$3,899 (AIPLA Economic Survey 2011) PPH Non-PPH Savings Actions per Disposal 2.2 3.0 Minimum: $2,086 $4,589 $6,258 $1,669 Maximum: $3,899 $8,577 $11,697 $3,120 8
PPH Growth Average number of new PPH requests per month at the USPTO * as of June 9
PPH Numbers at a Glance Number of petitions as of June 30, 2014: 12 months Cumulative Paris-PPH 3,606 14,406 PCT-PPH 3,563 10,511 Total 7,169 24,917 10
Bringing PPH to Scale Recognizing all of the benefits, increasing participation in PPH is a high priority for the Office Late in 2009 ambitious targets were set for increasing PPH requests, tracked on an annual basis USPTO Director convened a Taskforce to develop a plan for achieving these goals Developed an outreach campaign to: Educate the audiences on PPH basics and clearly communicate benefits of the program Target multiple audiences: current/potential users including inventors, practitioners, and owners Listen to the IP community to continue to identify ways to improve the program and eliminate barriers to its use 11
PPH Outreach PPH statements added to applicant forms Electronic filing receipt Notice of Allowability Office Action Summary As a result of the allowed claim(s), you may be eligible to benefit from the Patent Prosecution Highway program at a participating intellectual property office for the corresponding application. For more information, please see http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov. 12
PPH Outreach USPTO officials promote PPH at approximately 30 events per year User community reaching out to USPTO officials for more information Bonus: Stakeholder promotion of PPH 13
Next Steps for PPH at USPTO Quality studies Utilization studies Improve outreach materials User-centered re-design of the PPH website Program expansion Education and promotion! 14
Patent Prosecution Highway (PPH) PPH benefits every participant filing in multiple offices The program leverages the positive results indicated by an earlier examining office to render the following benefits in offices of later examination: Fast-Tracked and streamlined examination Higher initial allowance rate Over 80% of PPH applications result in Grants Rapid portfolio building for a substantial competitive advantage Significant and meaningful cost savings for innovators, enabling more IP to be exploited! USPTO encourages global stakeholders to take advantage of these benefits and to rapidly bring innovations into the marketplace USPTO PPH Website: http://www.uspto.gov/patents/init_events/pph/index.jsp 15
Thank you! maria.holtmann@uspto.gov 16
Annex PPH Basics 17
PPH Basics What is PPH? When an applicant receives a ruling from a first office that at least one claim in their application is allowable, the applicant can request to enter the PPH program in a second office If the request is granted, the second office can use the work done by the first office as a starting point That PPH case is then fast-tracked in the second office The second office is now looking at a case where most, if not all, of the major issues should already have been addressed 18
PPH Background Backlogs in offices around the world began to explode in the late 1990s The number of applications filed in multiple offices also started to steadily increase Offices began discussing potential ways to improve efficiencies focusing on worksharing PPH began as a pilot in between the JPO and USPTO in 2006 Today - 32 offices worldwide; 27 with USPTO 19
Benefits to Users and Offices Cost savings from fewer Office Actions, RCE s, etc. Higher quality shared search results. For example, a JP Examiner is better at searching JP art in Japanese than an English speaking USPTO examiner is. Then the JP results are shared with the USPTO Examiner. Quicker allowances due to preliminary amendment matching scope of allowed subject matter in first office. Provides a useful tool to expedite prosecution of claims in second office yields higher allowance rates. 20
PPH Original Framework Offices elect to participate in PPH through mutual bilateral arrangements, adapting their internal office procedures to implement the program When an applicant receives a ruling from a first office (OFF) that at least one claim in their application is allowable, the applicant can request to enter the PPH program in a second office (OSF) If the request is granted, the second office can use the work done by the first office as a starting point Unintended outcomes: Complex web of agreements with slightly varying requirements Administrative difficulties for offices Confusion for users Limited opportunities for entry into the program 21
PPH Improvements MOTTAINAI - Expanded eligibility - de-linking priority Original PPH framework based on OFF OSF workflow New approach: eligibility based on available work from a participating office on a patent family member, regardless of order of filing PPH 2.0 Simplified requirements to be more user friendly and reduce costs Applicant self-certification of claims correspondence Machine translations of Office actions accepted Examiner use of electronic dossier systems, where available, to access the work done by the earlier office (office actions, prior art cited, etc.) 22
PPH Improvements cont Global PPH / IP5 PPH pilot program at the USPTO Retains MOTTAINAI and PPH 2.0 Start date: January 6, 2014, USPTO and 17 other offices agreed to pilot a global program with one set of requirements for 1 year Any eligible PPH request filed now (even using older PPH forms) will be treated under new Global/IP5 Pilot Program Harmonizes the various PPH programs into one USPTO program (no more separate PCT-PPH and PPH programs Uses one standardized USPTO PPH Request form. Not one for each office as with original program Uses the common first date rule for related applications (easier to comply with than chain of priority rule) 23
Example of Global / IP5 PPH Form Application Number and Filing Date First Named Inventor Attorney Docket Number and Title of the Invention Office of earlier examination (OEE)* OEE application number Both the OEE application and identified U.S. application have the earliest filing or priority date Type of OEE work product relied upon* Mailing date of OEE work product * Drop down for selection 24
Global / IP5 PPH Form Requirements 25
Paris-Route PPH Request Form 26
PCT - PPH Request Form 27