Patent Prosecution Highway to be extended to cover International Applications

Following a successful initial launch period, the scope of the Patent Prosecution Highway (PPH) pilot agreements between the UK Intellectual Property Office (UK-IPO), the US Patent and Trade Mark Office (USPTO) and the Japanese Patent Office (JPO) are to be extended.

The extended procedure is now in force for the PPH with the USPTO, whilst the extended procedure relating to the PPH with the JPO will come in to force on 25 March 2008.

The Patent Prosecution Highway allows patent applicants who have received an examination report from one of the relevant national intellectual property offices to request accelerated examination of a corresponding patent application filed in another relevant country.

To date, the PPH pilot at the UK-IPO has only considered requests for accelerated examination relating to applications that were initially filed and examined at either the JPO or the USPTO. However, the pilot scheme is now being extended to cover examination reports issued by the JPO and USPTO which arise from an international application.

Under the new procedure, once the international application has been examined at either the JPO or the USPTO the applicant will be able to request accelerated examination at the UK-IPO. The agreement also allows accelerated examination at the JPO and the USPTO when the UK-IPO conducts an examination of an international application before it is examined at the JPO or USPTO.

This will greatly enhance the availability of the PPH and will help to further raise the efficiency and quality of patent examination work conducted at the UK-IPO, USPTO and JPO.

Editor notes

• The pilot scheme is the result of the signing of the Patent Prosecution Highway pilot agreement by the UK-IPO, USPTO and the JPO.
• The pilot agreement will build upon the initial success of the Patent Prosecution Highway piloted by the USPTO and the JPO, and will help promote international efforts to develop work sharing arrangements aimed at reducing cross-national duplication of effort.
• Patent applicants will be required to submit search and examination reports prepared by the other patent office in order qualify for accelerated treatment.
• The JPO started the PPH pilot program in July 2006 between the USPTO and July 2007 between the UK-IPO.
• The development of work sharing arrangements between the UK-IPO and other national patent offices is a key recommendation of the Gowers Review of Intellectual Property.
• For enquiries about the UK Intellectual Property Office press or media activities please contact Louise Hill on 01633 814840 or Bridget Whatmough on 01633 813825.

Date of release: 10 March 2008