Advantages and Issues for Patent Prosecution underneath Patent Prosecution Freeway within the U.S., Europe, China, and Singapore


I. Introduction

Patent Prosecution Freeway or PPH is a set of initiatives promulgated by collaborating patent places of work around the globe to speed up patent prosecution in nations of the collaborating patent places of work. PPH permits the collaborating patent places of work to share data and to profit from work carried out by different collaborating patent places of work, and thereby decreasing examination workload and enhancing high quality of patents.

Beneath PPH, prosecution of a patent software beforehand filed with a collaborating patent workplace will be fast-tracked in one other collaborating patent workplace if the patent software meets sure necessities. This text offers a quick overview of advantages of submitting patent purposes underneath PPH and necessities by which the patent purposes should fulfill with a view to take part in PPH.

II. Advantages of Collaborating in PPH

Submitting patent purposes underneath PPH can drastically cut back time it takes to prosecute the patent purposes. For instance, based on statistics launched by China Nationwide Mental Property Administration (CNIPA), a mean time to prosecute patent purposes filed underneath PPH, from preliminary submitting to receiving a remaining choice (e.g., allowance or abandonment), is roughly 11.9 months. In distinction, a mean time to prosecute non-PPH patent purposes is roughly 22.7 months[1]. Additional, based on the statistics, candidates can count on to obtain an preliminary workplace motion in simply 2.7 months after submitting PPH patent purposes – in contrast with 12.5 months for non-PPH patent purposes. Furthermore, submitting patent purposes underneath PPH might present value financial savings to candidates since PPH patent purposes want, on common, only one workplace motion earlier than issuance. Lastly, a mean allowance fee for PPH patent purposes is roughly 87.8%, whereas a mean allowance fee for non-PPH patent purposes is roughly 76.1%.

Patent purposes filed underneath PPH with the US Patent and Trademark Workplace (USPTO) take pleasure in related advantages. For instance, within the US, candidates can count on to obtain an preliminary workplace motion from the USPTO inside 2 months of submitting. Whereas, for non-PPH patent purposes, it takes a couple of 12 months or so to obtain an preliminary workplace motion from the USPTO. As evident, submitting patent purposes underneath PPH offers many advantages. As such, when contemplating submitting patents internationally, candidates are inspired to inquire whether or not patent purposes will be filed underneath PPH in nations of curiosity.

III. Eligibility Necessities for PPH

Though necessities to take part in PPH in every of the collaborating patent places of work might differ barely, some common guidelines apply. To be eligible for PPH at a collaborating patent workplace of curiosity, at time of submitting, candidates are required to indicate that: (1) a associated patent software has been decided by a collaborating patent workplace to be patentable; (2) the associated patent software contains a minimum of one patentable declare; and (3) claims of the patent software should sufficiently correspond to the allowed claims of the associated patent software. As soon as these necessities are met, candidates can apply for PPH by submitting a PPH request and offering the collaborating patent workplace of curiosity: (1) copies of all correspondences of the associated patent software; (2) a duplicate of the allowed claims of the associated patent software; and (3) a declare correspondence desk indicating relatedness between the claims of the patent software and the allowed claims of the associated patent software. A survey of PPH necessities for varied nations is offered under.

A. United States

The USPTO is a participant of PPH. Necessities for collaborating in PPH in the US are as comply with: (1) US software shares similar earliest date with corresponding Workplaces of Earlier Examination (OEE) software; (2) the OEE software has been decided to comprise a minimum of one patentable declare; (3) claims of the US software filed with the USPTO sufficiently correspond to claims deemed to be patentable within the OEE software; and (4) substantive examination of the US software has not begun.

If the above necessities are met, candidates can file a PPH request with the USPTO. The PPH request should be accompanied by: (1) the allowable claims of the OEE software; (2) a listing of references cited throughout prosecution of the OEE software; (3) copies of non-patent literature references cited throughout prosecution of the OEE software; (4) a declare correspondence desk displaying adequate correspondence; and (5) copies of correspondences which can be related to substantive examination for patentability.

B. China

The CNIPA is a participant of PPH. Necessities for collaborating in PPH in China are as comply with: (1) Chinese language software shares similar earliest date with corresponding Workplaces of Earlier Examination (OEE) software; (2) the Chinese language software will need to have been printed; (3) the OEE software has been decided to comprise a minimum of one patentable declare; (4) claims of the Chinese language software filed with the CNIPA sufficiently correspond to claims deemed to be patentable within the OEE software; and (5) substantive examination of the CNIPA software has not begun.

If the above necessities are met, candidates can file a PPH request with the CNIPA. The PPH request should be accompanied by: (1) Chinese language translations of the allowable claims of the OEE software; (2) a listing of references cited throughout prosecution of the OEE software; (3) copies of non-patent literature references cited throughout prosecution of the OEE software; (4) a declare correspondence desk with explanations; and (5) copies of correspondences which can be related to substantive examination for patentability.

C. European Union

The European Patent Workplace (EPO) is a participant of PPH. Necessities for collaborating in PPH in nations of the European Union are as comply with: (1) European software shares similar earliest date with corresponding Workplaces of Earlier Examination (OEE) software; (2) the OEE software has been decided to comprise a minimum of one patentable declare; (3) claims of the European software filed with the EPO sufficiently correspond to claims deemed to be patentable within the OEE software; and (4) substantive examination of the European software has not begun. Usually, EPO considers claims to have adequate correspondence when claims of OEE purposes are of the identical or related scope to claims of European purposes or claims of European purposes are narrower in scope than claims of OEE software.

If the above necessities are met, candidates can file a PPH request with the EPO. The PPH request should be accompanied by: (1) copies of OEE work merchandise (or newest work merchandise of a PCT software in worldwide part); (2) a duplicate of claims decided to be patentable by the OEE; and (3) copies of non-patent paperwork cited within the OEE work merchandise. These paperwork have to be in a minimum of one of many official languages of the European Union, i.e., English, French, and German. Machine translations of purposes in one of many official languages of the European Union are okay. Nevertheless, if the EPO determines that the machine translations are insufficient, the EPO might request official translations.

Though examination outcomes of worldwide purposes will be foundation for a PPH request earlier than EPO, purposes for which the EPO was the Worldwide Looking out Authority (ISA) and Worldwide Preliminary Inspecting Authority (IPEA) aren’t eligible for PPH earlier than the EPO. It is because there isn’t a work product that may be thought of as work achieved by “one other” workplace.

D. Singapore

The Mental Property Workplace of Singapore (IPOS) is a participant of PPH. Necessities for collaborating in PPH in Singapore are as comply with: (1) IPOS software and corresponding Workplaces of Earlier Examination (OEE) software shall have the identical earliest date (i.e., similar precedence date or submitting date); (2) the OEE software has a minimum of one declare that has been decided to be patentable by the OEE; (3) all claims within the IPOS software should sufficiently correspond or amended to sufficiently correspond to a number of claims decided to be patentable by the OEE; and (4) examination has not begun on the IPOS software.

If the above necessities are met, candidates can file a PPH request with the IPOS. The PPH request should be accompanied by: (1) copies of all workplace actions within the OEE software; (2) a duplicate of allowed claims of the OEE software; and (3) a declare correspondence desk displaying relatedness of the allowed claims to claims of the IPOS software. Copies of prior artwork references cited throughout prosecution of the OEE software aren’t required on the time of the PPH request. Nevertheless, the IPOS might request candidates to supply copies of subsequently cited prior artwork references. Furthermore, if the OEE software and the allowed claims aren’t in English, English translations should be filed with the PPH request. Nevertheless, these translations don’t have to be licensed.

FOOTNOTES

[1] http://ip.individuals.com.cn/n1/2019/0710/c179663-31225443.html

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