2010-12471. Notice Regarding the Elimination of the Fee for Petitions To Make Special Filed Under the Patent Prosecution Highway (PPH) Programs

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (USPTO) is eliminating the fee for the petition to make special under the Patent Prosecution Highway (PPH) programs. Currently, applicants must pay a petition fee under 37 CFR 1.17(h) to have an application to enter into the PPH program. With the elimination of the fee, applicants will no longer have to pay the petition to make special fee in order to request an application enter all current pilot and fully implemented PPH programs. The elimination of the petition fee will simplify the PPH requirements and is expected to encourage greater PPH participation.

Since 2006, the USPTO has implemented the Patent Prosecution Highway (PPH) programs with a number of patent offices as part of efforts to pursue work sharing to avoid duplication of work among patent offices, and for reducing its own pendency and backlog. Notices regarding the PPH programs are available on the USPTO Web site at: http://www.uspto.gov/​patents/​init_​events/​pph/​index.jsp. Until now, the PPH notices have indicated that a request for participation in the PPH program must be accompanied by a petition to make special under 37 CFR 1.102(d) along with the required petition fee set forth in 37 CFR 1.17(h).

The PPH applications have proven, on average, to take significantly less time to prosecute than non-PPH applications. Using the PPH process also increases the sharing and re-use of information (primarily search and examination results) between the USPTO and its partner patent offices. Improving the PPH framework to make it more user-friendly, and thereby encourage greater participation by applicants, would support the Office's goal to optimize both the quality and timeliness of patents. Therefore, the USPTO has determined that all PPH applications will now be advanced out of turn for examination under 37 CFR 1.102(a) in order to expedite the business of the Office. Applications that are advanced out of turn under 37 CFR 1.102(a) do not require the petition fee set forth in 37 CFR 1.17(h). Previously, applications were advanced out of turn under 37 CFR 1.102(d).

DATES:

Effective Date: May 25, 2010.

FOR FURTHER INFORMATION CONTACT:

Magdalen Greenlief, Office of the Associate Commissioner for Patent Examination Policy, by telephone at 571-272-8140, by facsimile transmission to 571-273-8140, or by mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION:

PPH is a first concrete implementation of a work-sharing framework which was jointly developed by the USPTO and the Japan Patent Office (JPO) in 2006 as a pilot project. The objective of the PPH is to promote work sharing while at the same time allowing applicants to obtain patentability determinations faster in multiple jurisdictions. The USPTO currently has PPH arrangements with ten patent offices-those in Japan, the United Kingdom, the Republic of Korea, Canada, Australia, the European Patent Office (EPO), Denmark, Germany, Singapore and Finland. Notices regarding the PPH programs with these patent offices are available on the USPTO Web site at: http://www.uspto.gov/​patents/​init_​events/​pph/​index.jsp.

Under the PPH program, if an application filed in an Office of First Filing (OFF) receives an indication that at least one claim is patentable, a corresponding application with corresponding claims filed in the USPTO as the Office of Second Filing (OSF) may be advanced out of turn for examination. To have the request for participation in the PPH accepted in the USPTO, an applicant must make available to the USPTO the relevant work of the OFF as well as any necessary translation. In addition, the request for participation in the PPH, until now, had to be accompanied by a petition to make special under 37 CFR 1.102(d) along with the required petition fee under 37 CFR 1.17(h).

The PPH has proven to be a useful work-sharing vehicle, as shown by the following statistics (as of February 2010):

• Over 2,500 PPH requests received by the USPTO since 2006;
• First action allowance rate for PPH applications is about 25%, about double the first action allowance rate for all applications;
• Overall allowance rate for PPH applications is about 93%, about double the allowance rate for all applications; and
• The average number of actions per disposal for PPH applications is about 1.7, which is significantly less than the number of actions per disposal for non-PPH applications.

While the PPH has been useful, it can be improved. The USPTO has taken a number of steps, in concert with the Japan Patent Office (JPO) and other PPH partners, to enhance the PPH framework to make it more user friendly and thereby encourage greater participation. In January 2010, the USPTO, JPO and EPO began a test implementation of an expanded PPH framework, to allow participation of the Patent Cooperation Treaty (PCT) national/regional phase applications when the International Authority has determined that one or more claims have novelty, inventive step and industrial applicability in the international phase. Previously, all PPH programs were confined to Paris Convention route applications. The expectation is that by expanding the PPH to include PCT work products, participation will increase.

The USPTO is taking additional steps to enhance the PPH framework to make the programs more user friendly and thereby encourage more participation. All petitions to make special filed with a PPH request on or after May 25, 2010 will be treated as a request that the Director order their application be advanced out of turn to expedite the business of the Office under 37 CFR 1.102(a), and the petition fee set forth in 37 CFR 1.17(h) will not be required. If the request for participation in the PPH and the request to the Director are granted, the application will be advanced out of turn for examination by order of the Director under 37 CFR 1.102(a).

Petitions to make special filed with a PPH request prior to May 25, 2010 will be treated under 37 CFR 1.102(d) and the petition fee set forth in 37 CFR 1.17(h) will be required.

Dated: May 18, 2010.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.