Israel Patent Office Launches PCT-Patent Prosecution Highway Pilot

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In past postings, we discussed bilateral Patent Prosecution Highway (PPH) programs allowing an applicant to fast track an application in one jurisdiction based on a favorable finding of the claims in a corresponding application in another jurisdiction. For many applicants, the PPH is an effective way to reduce examination time and patent fees.

On August 1, 2013, a unilateral PCT-PPH pilot program commenced within the Israel Patent Office (ILPO). Under this program, an applicant can fast track his/her national stage application in Israel based on 1) a positive written opinion from either the International Searching Authority or the International Preliminary Examination Authority, or 2) a favorable International Preliminary Report on Patentability, issued by the ILPO.

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Friday Foreign Filing Roundup

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Good morning and Happy Friday.  Below are the latest updates in foreign patent filing news for the week of July 8th:

  • The USPTO and SIPO launched the Global Patent Search Network allowing users to search Chinese patent documents. 
  • Iran became the 148th PCT Contracting State on July 4th and the PCT will become active on October 4, 2013. 
  • The search to find a permanent home for the Silicon Valley patent office has been put on hold.
  • Recently, patent offices in Singapore and China launched a two year Patent Prosecution Highway pilot program.

That’s all for this week! Please be sure to check us out on Twitter @inoviaIP.

The Patent Prosecution Highway Goes Global


In previous articles, we’ve reported on developments regarding Patent Prosecution Highway (PPH) programs. In a nutshell, PPH

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programs are bilateral agreements between countries wherein an allowed or granted patent in one country would allow the applicant to fast-track examination of the corresponding application in another country, assuming that certain requirements are met. There are numerous benefits to PPH programs and their proliferation and use have grown significantly in recent years. For the applicant, electing the PPH shortens pendency time and increases the likelihood of grant. For patent offices, workload is reduced since the earlier patent office presumably has performed much of the “heavy lifting” associated with examination.

Recently, it was announced that a Global Patent Prosecution Highway will come into effect on January 6, 2014. The Global PPH will involve 13 patent offices and will follow a single set of requirements, thus simplifying the numerous bilateral PPH programs currently in place around the world. The 13 member offices are IP Australia, Canadian IP Office, Danish Patent & Trademark Office, National Board of Patents & Registration of Finland, Japan Patent Office, Korean IP Office, Nordic Patent Institute, Norwegian Industrial Property Office, Portuguese Institute of Industrial Property, Russian Federal Service for IP, Spanish Patent & Trademark Office, United Kingdom IP Office, and the US Patent & Trademark Office.

More details on the Global PPH Program can be found here.

IP5 Offices Agree on Joint PPH Pilot Program

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The five largest Intellectual Property Offices in the world – the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO), recently agreed to launch a pilot program scheduled to kick off in January of 2014.  This program, known as the IP5 Patent Prosecution Highway (PPH), aims to improve the accelerated treatment of patent applications between the five offices and encourages a global framework of work sharing.

According to the heads of these five offices, the primary goal of the PPH is to leverage procedures already in place which accelerate patent examination procedures.  Under the IP5, applicants who have been found patentable by one office may be allowed accelerated processing of their applications before the other countries.  In addition to fast tracking this process, the offices involved will exploit existing work results to the extent practicable. 

According to EPO President Benoît Battistelli, the program will have many benefits.  He states, “I am pleased that the first ever all-inclusive PPH pilot program is launched under the PCT framework. It is a very promising step on the way of facilitating the life of users in five big economic regions which represent 85% of the patents granted in the world.  While the program allows the offices to gain additional experience in utilizing each others available work, it will support the aim of promoting the PCT as the primary global framework for work sharing”. 

As Battistelli notes, the IP5 Patent Prosecution Highway program encourages a global commitment to improving and making patent filing more efficient.  For more information on the IP5 PPH pilot program, please contact Eugen Stohr at the EPO, 

Check out the PPH archive of our blog for news about other recent pilot programs. And as always, learn more about inovia’s services by following us on Twitter @inoviaIP.

Friday Foreign Filing Roundup

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Happy Friday everyone! It’s been a bitterly cold week here in Manhattan, so we certainly hope you’re faring better wherever you are! See below for this week’s roundup of our favorite foreign filing news:

  • Facebook may have another patent lawsuit on the horizon, as more questions of intellectual property infringement arise.
  • A new patent prosecution highway has launched between Denmark (DKPTO) and China (SIPO) allowing applicants the possibility to fast track examination.
  • The Canadian Intellectual Property Office (CIPO) released a notice reminding applicants of the guidelines associated with amending a PCT application.
  • China continues its crackdown on IP infringement, announcing a number of different initiatives set to take effect this year.

You can tweet us at @inoviaIP!

Permanent Patent Prosecution Highway Program Launched between US and Taiwan

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Happy New Year to our readers! Here’s some foreign filing news to kick off 2013…

For many applicants, the Patent Prosecution Highway (PPH) is an invaluable resource for expediting and reducing the costs of foreign applications. The PPH is a work-sharing agreement between 2 patent offices wherein a finding by one patent office that at least one claim in the application is patentable will allow the applicant to fast-track the corresponding application in the other patent office.

On December 21, 2012, the United States Patent and Trademark Office (USPTO) announced the launch of a permanent PPH program with the Taiwan Intellectual Property Office (TIPO), building upon the pilot PPH program that had commenced on September 1, 2011. With more US applicants interested in seeking patent protection in Taiwan, this PPH program will surely be a welcome addition to the 30+ PPH agreements the USPTO already has in place.

While we’re on the topic of Taiwan, a request we often receive from clients is to file their PCT application into Taiwan at the national stage. Unfortunately, Taiwan is not a member of the Patent Cooperation Treaty and the PCT application cannot be filed there at the 30/31-month deadline. Even worse, by the time the 30/31-month filing deadline rolls around, the deadline for filing into Taiwan has long passed. Taiwan, although not a party to the Paris Convention, does recognize priority claims from contracting members. That means that an applicant must file into Taiwan within 12 months from the earliest priority date if they wish to obtain patent protection there.

Did you know that inovia recently launched a Paris Convention filing service, allowing you to file directly into 17 countries, including Taiwan? Register for a free account to get an instant quote for direct Paris Convention filings.

Friday Foreign Filing Roundup

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Hi everyone! Take a look at some of the latest stories in foreign filing over the past week:

  • Check out this 5-minute guide to Europe’s newly-passed unified patent court system.
  • Our own New York senator, Charles Schumer, introduced a bill this week that targets patent trolls.
  • Here’s a great article we found that details the (relatively-new) patent prosecution highway system.
  • inovia news: A few members of our team attended an LES event last week to celebrate World IP Day and connect with fellow IP professionals in the city. Discussion topics included the America Invents Act, software IP rights and more.

To all of our friends en route to Dallas for INTA 2013, we hope to see you this weekend! We’ll be tweeting @inoviaIP.

Expediting Patent Applications: US

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We recently discussed options for speeding up grant of a European patent. As we mentioned, reasons to expedite grant include the existence of a potential infringer, or the need to obtain grant to enable licensing or sale.

Today, we’ll take a look at what options are available in the U.S.

Accelerated Examination Program
At first glance, this sounds like a great option. You may pay a small fee (or no fee if your invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism) and prosecution will generally be completed within 12 months.

There are, however, some very significant restrictions. The quid pro quo for quick prosecution is that you get to do most of the work that would otherwise be done by the examiner. That means:

  • Showing how each feature of every claim is supported in the specification.
  • Performing a search on each and very claim. This doesn’t mean just presenting a few documents, either. You have to submit full details of your search statements.
  • Explaining how each claim is allowable over the documents uncovered by the search.

Quite aside from the effort (and cost, given most applicants will use a patent attorney), there are significant concerns among many applicants that being required to be your own searcher and examiner represents a conflict of interest. You’re basically being asked to characterize your invention’s relationship with the prior art – something that is generally avoided by applicants as far as possible to avoid potential estoppel issues (“estoppel” in this context is the legal principle under which asserting something at one stage prevents you from arguing the opposite later. “File wrapper estoppel” means that if you say something on the written record during patent prosecution before the EPO, you will be prevented from asserting anything contradictory later, including during litigation, for example).

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Friday Foreign Filing Roundup

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Good morning and Happy Friday! Here is the roundup of the latest news in foreign patent filing for the week of December 1st:

  • Deputy Director Michelle K. Lee recently posted a blog article discussing changes to the USPTO satellite offices. 
  • The EPO signed a Patent Prosecution Highway (PPH) pilot program with the Israel Patent Office to enable accelerated treatment of patent applications. 
  • An innovation that comes right in time for the holiday season! This fitting room turns into an interactive screen with a touch of a button. Genius!
  • This blog article looks at how billable hours curb innovation and drive up costs, while increasing inefficiencies and the overworking of staff.

Check back next week for more headlines. Have a great weekend, and as always check us out on Twitter @inoviaIP!

USPTO to Expand Work Sharing with Australia and Finland

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The United States Patent Office (USPTO) and IP Australia (IPAU) recently extended the existing Patent Prosecution Highway (PPH) program between the two offices.  Originally scheduled to expire this year, this agreement extends the PPH program until April 13, 2012.

The USPTO and IPAU also announced the creation of a bilateral PCT-PPH program.  Under the previous PPH program, work-sharing was limited to search and examination results under the Paris Convention.  With the PCT-PPH in place, favorable international search reports with written opinions or international preliminary examination reports are now available to expedite prosecution.  Like the PPH, the PCT-PPH will also be in effect until April 13, 2012.

“We are pleased to extend and expand work sharing between the USPTO and IPAU,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By including PCT international phase work, more work can be shared between our two offices.  This will benefit applicants by reducing patent pendency and improving quality.”

The USPTO and the National Board of Patents and Registration of Finland (NBPR) also announced the expansion of their PPH agreement.  The previous agreement was limited to search and examination results under the Paris Convention.  With this expansion, PCT documents, such as international search reports with written opinions or international preliminary examination reports, can be used to expedite and improve examination in the USPTO and NBPR. 

“This agreement will amplify the work sharing potential between the two offices by including PCT international phase work,” said Kappos. 

Applicants can expect the creation and extension of more of these programs as patent offices around the world make efforts to improve patent examination quality and decrease backlog.

Additional information on the Patent Prosecution Highway and other work-sharing efforts can be found here on our foreign filing blog.