Patent Prosecution Highway Flashcards
What is the purpose of PPH?
PPH enables an applicant who receives a positive ruling on patent claims from Earlier Office to request accelerated prosecution of corresponding claims in another Later Office, which allows the applicant to obtain a patentability decision in the second/later Office more quickly.
What are the requirements for participating in Global PPH or IP5 PPH in the USPTO?
1) U.S. appln must have the same earliest date, whether this is the priority date or filing date, as the corresponding national or regional application.
2) Corresponding application has at least one claim indicated by OEE to be allowable/patentable.
3) All claims in the U.S. application sufficiently correspond to allowable/patentable claims in corresponding OEE application. The claim is of the same or similar scope as an allowable/patentable claim in the corresponding OEE application. A claim in the U.S. application that is narrower in scope than the claim allowed in the OEE application will sufficiently correspond if presented as a claim dependent upon a claim that is of the same or similar scope as a claim indicated as allowable/patentable in OEE application.
4) Substantive examination of U.S. application has not begun
What are the required documents that applicant needs to submit to participate in Global/IP5 PPH program?
1) Request for participation in PPH and Request that U.S. appln be advanced out of turn for examination under 37 CFR 1.102. No fee required.
2) Claims correspondence in English. All claims in the U.S. appln correspond to allowable/patentable claims in OEE appln.
3) Copy of OA issued just prior to the “Decision to Grant a Patent.” (e.g., Notification of Reasons for Refusal; WO of ISA; CH II Demand) if not identified and available on Dossier Access System or PATENTSCOPE system.
4) IDS and copies of all documents (expect U.S. patent and U.S. patent application publications).
What happens if the Request to participate in PPH and advance out of examination is not perfected?
Applicant will be given one opportunity to perfect the request in a renewed request for participation.
Will the action on the application by the USPTO be suspended under 37 USC 103 awaiting a renewed request for participation?
NO.
What happens if the renewed request is perfected and examination has not begun?
The Request to participate in PPH and special status to advance out of turn for examination will be granted.
What happens if the renewed request is perfected and examination has already begun?
The renewed Request will be dismissed.
What happens if the renewed Request is not perfected?
Applicant will be notified, and the application will await action in its regular turn.
Can you add or amend claims after the grant of the Request for participation in the PPH?
Yes, but it must sufficiently correspond to one or more allowable/patentable claims in the OEE application along with a statement certifying that the amended or newly added claims sufficiently correspond to the allowable/patentable claims in the OEE appln.
If certification statement is amended, the amendment will not be entered and will be treated as a non-responsive reply.
