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American Intellectual Property Law Association
Update regarding PCT and PPH at the USPTO
Yuichi Watanabe
Joint Meeting of AIPLA and JPO in 2014 (Patent)
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Tokyo
April 7, 2014
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Update regarding PCT
at the USPTO
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PCT at the USPTO
• Effective December 18, 2013, USPTO has
implemented new rules pertaining to the Patent
Law Treaties Implementation Act (PLTIA) of 2012
– The most notable changes relates to:
• (1) filing date requirements for a patent application;
• (2) restoration of patent rights via revival of abandoned
applications and acceptance of delayed maintenance fee
payments; and
• (3) restoration of the right of priority/benefit in a subsequent
application filed within two months of the expiration of priority
deadline.
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“Changes to Implement the Patent Law Treaty,” 78 Fed. Reg. 62367 (Oct. 21, 2013) (final rule)
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PCT at the USPTO
• Examples:
– A claim is no longer required for a nonprovisional
application (other than for a design patent) to be entitled
to filing date
• Does NOT apply to PCT applications
– A nonprovisional application may be filed ‘‘by
reference’’ to a previously filed application instead of
filing the specification and drawings
– Abandoned applications may be revived and delayed
maintenance fee payments may be accepted solely on
the basis of unintentional delay
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• “Unavoidable” delay no longer a basis for revival or acceptance
of late maintenance fees
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PCT at the USPTO
• Another example:
– If application is filed after the expiration of the 12-month
period set forth in 35 U.S.C. 119(a)/(e)*, but within two
months from the expiration of that period the right of
priority in the application may be restored upon petition
and payment of the applicable fee if the delay in filing
the subsequent application within the 12-month period
was unintentional
• *119(a): priority to earlier-filed foreign application
– Period is six months in the case of a design application
• *119(e): priority to provisional application
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PCT at the USPTO
• PLTIA rules that affect PCT (and national phase)
applications:
– Petition to revive unavoidably abandoned international
application is no longer available
– Petition fee to revive unintentionally abandoned
international application decreased from $1,900 to
$1,700 (for small entities, $950 to $850)
• Micro entity discount is no longer available
– Request fee for restoration of right of priority increased
from $1,420 to $1,700 (for small entities, $710 to $850)
• micro entity discount is no longer available
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http://www.uspto.gov/patents/init_events/pct/Announcements.jsp (last visited March 26, 2014)
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PCT at the USPTO
• Effective Jan. 1, 2014, small and micro entity
discounts are available for the following PCT fees:
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Transmittal fee;
Search fee;
Supplemental Search fee;
Fee for Transmitting Application to IB to act as
Receiving Office;
– Preliminary Examination fees;
– Supplemental Examination fees; and
– Late Payment fee
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USPTO PCT Trends - Statistics
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USPTO PCT Trends - Statistics
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USPTO PCT Trends - Statistics
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Update regarding PPH
at the USPTO
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USPTO PPH Pilot Programs
• On January 6, 2014, the USPTO launched two
pilot programs that simplify access to participating
PPH offices
– Global PPH
– IP5 PPH
• Global PPH pilot program will run for a period of
one year ending on January 5, 2015
• IP5 PPH pilot program will run for a period of three
years ending on January 5, 2017
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Michelle K. Lee, “Implementation of the Global and IPS Patent Prosecution Highway (PPH) Pilot Programs
with Participating Offices” (Feb. 10, 2014)
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USPTO PPH Pilot Programs
• Global PPH and IP5 PPH will run concurrently and
are substantially identical
– Both have same requirements
– USPTO applicants need not even specify which pilot
program is being used
• Because USPTO elected to participate in both
programs, a PPH request may be filed in the
USPTO based on the work product of any office
participating in either pilot program
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USPTO PPH Pilot Programs
• For USPTO applications, Global PPH and IP5 PPH
pilot programs supersede any prior PPH
program between USPTO and other Global PPH
and IP5 PPH participating offices
• Any existing PPH programs between USPTO and
offices not participating in either the Global PPH
pilot program or the IP5 PPH pilot program remain
in effect
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Offices Participating in PPH Pilot Programs
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Eligibility for USPTO PPH Pilot Programs
• (1) U.S. application must have the same earliest
date (priority or filing date) as that of a
corresponding national/regional application filed
with another participating office, or a
corresponding international application for which
one of the participating offices was ISA/IPEA;
• (2) Corresponding application has at least one
claim indicated by OEE* to be allowable or
patentable;
– *OEE: Office of Earlier Examination
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Eligibility for USPTO PPH Pilot Programs
• (3) Substantive examination of the U.S. application
has not begun; and
• (4) All claims in U.S. application must sufficiently
correspond to the allowable/patentable claims in
the corresponding OEE application
– “Sufficiently correspond” means, besides differences
due to claim format requirements, the claims are of the
same or similar scope
– Dependent claims narrower in scope may sufficiently
correspond, but a claim in U.S. application that
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introduces
considered to sufficiently correspond
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Required Docs for USPTO PPH Pilot Programs
• (1) Request for participation in the Global/IP5 PPH
pilot program and a request that the U.S.
application be advanced out of turn for
examination;
• (2) Claims correspondence table in English,
indicating how and certifying that all claims in the
U.S. application correspond to
allowable/patentable claims in the OEE
application;
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Required Docs for USPTO PPH Pilot Programs
• (3) An (IDS) listing the documents cited in the
office action or PCT work product along with
copies of all documents (except U.S. patents and
U.S. patent application publications.);
• (4) A copy of the office action issued just prior to
the Decision to Grant in the OEE national/regional
application or the latest international work product
in the international phase of the OEE PCT
application, along with its English translation;
– If the office action or PCT work product is already
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present in the U.S. application or is available via the
Dossier Access System Web, just identify the document
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Other Notes on USPTO PPH Pilot Programs
• If the PPH participation request does NOT meet all
the requirements, applicant will be given only one
opportunity to perfect the request
• However, USPTO will NOT suspend action on
the application while awaiting a renewed request
for participation
– Thus, if the application is picked up for examination after
applicant has been notified of the defects in the request,
any renewed request will be dismissed
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Other Notes on USPTO PPH Pilot Programs
• PPH pilot programs carry over to an RCE of the
application, but NOT to a continuing application
• Any claims amended or added after the grant of
the request for participation in the Global/IP5 PPH
pilot program must sufficiently correspond to one
or more allowable/patentable claims in the OEE
application
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USPTO PPH Statistics (as of Dec. 2013)
• Number of national-PPH requests: 12403
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JPO was OEE in 8614
PPH request grant rate: 87.9%
First action allowance rate: 27.1%
Avg. pendency, request to first OA: 4.4 mos.
Avg. pendency, request to final decision: 14.0 mos.
Avg. number of OAs: 1.01
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http://www.jpo.go.jp/ppph-portal/statistics.htm (last visited March 26, 2014)
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USPTO PPH Statistics (as of Dec. 2013)
• Number of PCT-PPH requests: 8764
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JPO was ISA/IPEA in 1690
PPH request grant rate: 90.3%
First action allowance rate: 19.9%
Avg. pendency, request to first OA: 5.2 mos.
Avg. pendency, request to final decision: 14.1 mos.
Avg. number of OAs: 0.46
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Thanks for your attention! Questions?
Yuichi Watanabe
Osha Liang LLP
Two Houston Center
Suite 3500
909 Fannin St.
Houston, TX 77009 USA
1-713-228-8600
watanabe@oshaliang.com
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