pph Flashcards
1.
In which of the following circumstances would a patent application be eligible for entry into the Patent Prosecution Highway (PPH) under the rules and procedures in effect at the United States Patent and Trademark Office (USPTO)?
I. You must have received a patent from a partnering PPH office.
II. The application with allowable subject matter and the application you file at the USPTO share a common earliest priority date.
III. A Notice of Missing Parts has been received, but not yet responded to, in the application filed at the USPTO prior to receiving an indication of allowable subject matter from a partnering PPH office.
3 main points of PPH
2&3
In order to be eligible for entry into the Patent Prosecution Highway (PPH), the applicant must have already received an indication of allowable subject matter in a related patent application from a partnering PPH office. The indication of allowable subject matter can come before the patent actually issues in the Office of Earlier Examination (OEE). Therefore (I) is incorrect.
In order to partake in the PPH, it is a requirement that the application with allowable subject matter from a partnering PPH office must share the common earliest date of priority. Therefore (II) is correct.
The rule for entry into the PPH says that examination cannot have started in the U.S. application prior to entry into the PPH. This requirement, however, relates to substantive examination. The USPTO has specifically explained: “if you have only received a notice to file missing parts, this would not be considered as substantive examination.” Thus, in this question, you have received but have not yet responded to the Notice of Missing Parts, which means that no substantive examination could possibly have started. Therefore, you could still enter the PPH.
Which of the following are not false with respect to the Patent Prosecution Highway (PPH) at the United States Patent and Trademark Office (USPTO)?
A The applicant requesting entry into the PPH must supply the work product of the Office of Earlier Examination (OEE).
B A machine translation of the work product of the OEE is prohibited.
C If a U.S. application has received a first office action on the merits. it would not be possible to enter the PPH in a continuation filed that claims priority to the earlier U.S. application.
D After entry into the PPH at the USPTO, the patent examiner must reach a final decision within 12 months.
E None of the above is true.
E
(A) is false because the PPH rules state that, if a copy of the office action from the OEE is available via the Dossier Access System, the applicant may request the USPTO obtain the copy via the Dossier Access System. If office action from the OEE is not available via the Dossier Access System, the applicant must provide a copy. If the applicant is unable to verify access via the Dossier Access System, the applicant should provide a copy.
(B) is false because machine translations are allowed; however, if the translation is of such poor quality that it is difficult to understand, the USPTO may require the applicant to submit a manual translation.
(C) is false. While it would no longer be possible to enter the PPH on the original U.S. application, provided all other requirements are satisfied, it would be possible to file a continuation and enter the PPH in the continuation.
(D) is false because the PPH program does not require final disposition of the application within 12 months.
- Sam Ottawa filed a patent application in Canada on April 26, 2012, which related to his new and improved ice-hole drilling device, and which subsequently published on June 25, 2013. Ottawa subsequently filed a patent application in the United States relating to the same ice-hole drilling device on October 25, 2013, claiming priority to the earlier-filed Canadian patent application. The specification of the U.S. application was identical in scope to the application filed in Canada. On December 10, 2014, Ottawa received indication from the Canadian patent examiner that several of his claims relating to a solar-powered version of his ice-hole drilling device were patentable. Unfortunately, the claims originally filed in the U.S. patent application do not sufficiently correspond to the claims the Canadian patent examiner will allow. Undeterred, Ottawa now wants to request entry into the Patent Prosecution Highway in the U.S. Will his request to enter the PPH be granted?
A Yes, provided that Ottawa can demonstrate that the claims he is seeking in the U.S. sufficiently correspond to the allowable claims in the Canadian patent application.
B Yes, but only if Ottawa requests that priority be restored and the failure to file in the United States within 12 months of the Canadian filing was unintentional.
C Yes, but only if Ottawa provides a copy of the allowable claims from his previously filed Canadian application.
D No, because the U.S. application does not have the same priority date as the Canadian application.
E No, because the claims he will receive in Canada do not sufficiently correspond to those originally filed in his U.S. patent application.
D
In order to qualify for the PPH, it is required that the application from the Office of Earlier Examination (OEE) have the same priority date as the application filed in the U.S. for which entry into the PPH is sought. Here, the application was filed in Canada on April 26, 2012, which means an application properly claiming priority could only be filed in the U.S. until April 26, 2013. Because the PLTIA did not go into effect until December 18, 2013, Ottawa does not have the ability to restore priority for up to 2 months beyond the 12-month deadline. Therefore, the U.S. application on the ice-hole drilling device does not enjoy the same earliest date of priority, which will keep it out of the PPH.
different scope of the allowable claim and US claim, eligible?
Ironically, a claim that is narrower than one allowed in the Office of Earlier Examination (OEE) can only be granted if it is a dependent claim, which is dependent upon a claim that is of the same or similar scope as a claim indicated as allowable in the OEE application. It is, however, possible to amend the application to make the claim “sufficiently correspond” to the claim deemed allowable in the OEE.
Applicant files an international patent application in Japan on December 11, 2012. The applicant receives an International Preliminary Examination Report that indicates that at least one claim is allowable.
eligible?
PPH is available in (C). The notice of allowability that can support entry into the PPH can come from “PCT work product” or “international work product.” This includes a written opinion of the International Search Authority, a written opinion of the International Preliminary Examination Authority, or an International Preliminary Examination Report that indicates at least one claim is allowable.
filed in canada, international claim that priority, then enter US, but add new feature with a CIP
original claim allowed in canada
PPH for CIP?
The PPH can be entered with respect to the continuation-in-part application, but claims to the enhanced gizmo features will not be able to be obtained.
Here, the continuation-in-part application shares the same priority filing date of the original Canadian patent application, but only with respect to what was on file as of that date. The continuation-in-part application adds matter not previously disclosed, so that new disclosure will provoke a new priority date with respect to the new disclosure.
The U.S. application for which participation in the PPH is requested must have the same earliest date, whether this is the priority date or filing date, as that of a corresponding earlier-filed application from a participating PPH office. Thus, the continuation-in-part application qualifies because it does have the same earliest priority date.
Remember, however, that the whole point of the PPH is to accelerate claims that “sufficiently correspond” to allowable claims in the corresponding patent application already reviewed in the Office of Earlier Examination (OEE). The claims identified as allowable in the OEE, which in this case is the Canadian Patent Office, would necessarily be limited to the basic gizmo and not the gizmo with enhanced durability features, because the original Canadian filing only disclosed the basic gizmo.
Therefore, it is possible for the continuation-in-part application to enter the PPH, but the claims would need to be limited to the basic gizmo and still be the same or similar in scope to the allowed patent claims in Canada. Thus, II is a correct statement and I is an incorrect statement.
Whether AIA 102 or pre-AIA 102 applies is irrelevant to the inquiry; therefore, III and IV are incorrect.
9.
Jenna Tyson filed a patent application in Canada on April 17, 2013, relating to an inflatable lounge chair with integrated radio. She subsequently filed a patent application in the United States on May 15, 2014, which claimed priority to the earlier-filed Canadian patent application. Papers were filed to restore priority, together with the applicable fee, based on the fact that Tyson mistakenly docketed May 17, 2014, as the date by which she needed to file a U.S. application.
The Canadian patent application received a favorable office action on November 26, 2014, indicating that several claims were allowable. She requested participating in the PPH in the United States. The request for entry into the PPH was deemed non-compliant, and the USPTO notified Tyson that her request could not be granted because her request did not satisfy all of the requirements for entry in the PPH.
Which of the following most accurately reflects the status of Tyson’s attempt to enter the PPH in the United States?
A Having failed to satisfy the requirements of the PPH, being un-prejudiced by any previous failed attempts, Tyson may subsequently request participation in the PPH program again.
B Tyson will be given one opportunity to perfect the request in a renewed request for participation.
C Tyson may ask the USPTO to suspend action on the U.S. application so that she can file a renewed request for participation in the PPH.
D Because Tyson filed a timely request to enter the PPH in the United States, even if the U.S. application is subsequently examined prior to her filing a renewed request, participation in the PPH can still be achieved without the need to file a continuation.
E Having failed to satisfy the requirements of the PPH, Tyson will be notified by the Patent Office that the application now must await action in its regular turn.
In those instances where the request for participation in the PPH pilot program does not meet all the requirements, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to perfect the request in a renewed request for participation. Action on the application by the USPTO will NOT be suspended (37 CFR 1.103) awaiting a renewed request for participation. If the application is picked up for examination after the applicant has been notified of the defects in the request, any renewed request will be dismissed. If the renewed request is perfected and examination has not begun, the request and special status will be granted, the applicant will be notified, and the U.S. application will be advanced out of turn for examination. If the request is not perfected, the applicant will be notified and the application will await action in its regular turn.
(A) is incorrect because the applicant has only a single chance to fix the inadequate PPH request.
(C) is incorrect because the USPTO has stated explicitly that suspension of an application is specifically not an option for purpose of delaying examination to renew a PPH request.
(D) is incorrect because, if examination begins prior to a renewed request, the request will be dismissed.
(E) is incorrect because the applicant does have one opportunity to submit a new, compliant request.
