For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 11 March 2008

PPH experiment to go international

The UK IPO has issued a press release, "Patent Prosecution Highway to be extended to cover International Applications", which says, in relevant part:

"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".
The IPKat presumes that the PPH pilot scheme is being extended either because (i) it has initially worked well or (ii) because it is politically or strategically expedient to do so. The Press Release suggests the former, but neither it nor the accompanying Notes for Editors has given any clue as to how heavily it has been used [Merpel adds, I haven't even heard people talking about it ...]. Can anyone enlighten us?

2 comments:

David said...

I suspect that there are no figures about how heavily the PPH is used because hardly any applicants actually use it. I further suspect that this will be the case because there are very few circumstances where an applicant will want to have their applications in the UK and elsewhere granted quickly enough to justify using the service. In reality, the PPH is much more (if not all) about benefits for the patent offices themselves rather than for applicants, because offices can share the efforts of search and examination. This will be particularly important for the UK-IPO, which loses money on search and examination (getting it back with renewal fees). This is not a bad thing, it's just that it has been marketed as being a service aimed at applicants, which it isn't really.

Wayne Condon said...

I am not sure of the reason for the increasing internationalisation of the roll out but I can confirm that IP Australia has agreed to participate in the PPH pilot with the USPTO for an initial 12 month period. It was stated that the aim of the participation in the pilot is to

1. Strengthen institutional ties and work sharing/recognition with the USPTO;

2. Provide IP Australia with an opportunity to influence the development of the PPH in line withy IP Australia's strategic direction and the Ideal Patent system (whatever that means !);

3. Test applicant demand and usefulness for the PPH and

4. Quantify the quality and efficiency gains to be expected.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':