The Patent Prosecution Highway

1. The Patent Prosecution Highway How To Exploit The Potential Expressway To Allowance

2. Patent Prosecution Highway (PPH)

3. Patent Prosecution Highway (PPH): USPTO PPH Partners Australia Hungary Austria Japan Canada Korea Denmark Russia Singapore EPO Finland Spain Germany United Kingdom

4. Patent Prosecution Highway (PPH): USPTO PCT-PPH Partners Austria Korea EPO Russia Japan Spain

5. Patent Prosecution Highway (PPH): USPTO Requirements for Participation • The OFF application must contain at least one claim that was determined by the OFF to be allowable. • All the claims in the U.S. application (including any subsequently amended or added claims) must sufficiently correspond to the allowable claims in the OFF application. • The claims must have the same or similar scope. • They could have differences due to translations and claim format requirements. • Revised definition of “sufficiently correspond” for PCT-PPH and JPO-PPH.

6. Patent Prosecution Highway (PPH): USPTO Requirements for Participation • The U.S. utility application must be: • A Paris Convention application which • validly claims priority to one or more applications of the OFF, or • validly claims priority to a PCT application that contains no priority. • A national stage application under the PCT, which PCT application • validly claims priority to an application filed with the OFF, or • validly claims priority to a PCT application that contains no priority claims, or • contains no priority claim. • A so-called bypass application which validly claims benefit under 35 U.S.C. 120 to a PCT application, which PCT application meets the requirements of 2(a), (b) or (c) above.

7. Patent Prosecution Highway (PPH): USPTO Requirements of PPH Request • Applicant Must File: • A request for participation in the PPH (pilot) program, and a petition to make special prior to the first Office action on the merits; • No more fee for the petition to make special under the PPH program. • A copy of all OFF Office Actions (excluding “Decision to Grant a Patent”), which are relevant to patentability.* • An information disclosure statement (IDS) listing the documents cited by the OFF examiner; and • A copy of the allowable claims in the OFF application.* * If not in English, an English translation thereof and a statement that the English translation is accurate.

8. Patent Prosecution Highway (PPH): USPTO Requirements of PPH Request • Applicant Must File: (Cont.) • A claims correspondence table in English to indicate how all of the claims in the U.S. application correspond to the allowable claims in the OFF application. • Updated claims correspondence table may be required for an amendment to the claims. • Papers must be filed through EFS-Web. • If request does not meet requirements, only one opportunity to perfect.

9. Patent Prosecution Highway (PPH): USPTO Requirements of PPH Request • No carry over to continuing applications. • Continuing applications must separately fulfill requirements above.

10. Patent Prosecution Highway (PPH): USPTO Special Examining Procedures • Once request to participate in the PPH (pilot) program and special status has been granted, the U.S. application will be taken up for examination by the U.S. examiner before all other categories of applications, except • Applications clearly in condition for allowance, • Applications with set time limits (e.g., Examiner’s Answer), • Applications that have been granted special status for “accelerated examination.”

11. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(a)(i) – US application with (single) Paris Convention priority claim to a OFF application OFF application

12. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(a)(ii) – US application claims Paris Convention priority to a PCT application OFF DO application

13. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(b)(i) – US application is a national stage of a PCT application which claims Paris Convention priority to a OFF application OFF application

14. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(b)(ii) – US application is a national stage of a PCT application which claims Paris Convention priority to another PCT application OFF DO application

15. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(b)(iii) – US application is a national stage of a PCT application without priority claim OFF DO application

16. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(c)(i) – US application is a 111(a) bypass of a PCT application which claims Paris Convention priority to a OFF application OFF application

17. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(c)(ii) – US application is a 111(a) bypass of a PCT application which claims Paris Convention priority to another PCT application OFF DO application

18. Patent Prosecution Highway (PPH): OSF Application validly claims priority • 1(c)(iii) – US application is a 111(a) bypass application of a PCT application without priority claim OFF DO application

19. Patent Prosecution Highway (PPH): What are the Risks • Typically narrower claims are pursued in order to obtain allowance before FA in OSF. • Increased exposure to inequitable conduct claims? • What happens if another OFF country (one which is not being relied on to enter the PPH program) rejects claims? • Historically office actions from foreign patent offices were not considered material by the courts. • Entering the PPH program may change the analysis. • Must remember that foreign patent offices have different standards relating to duty of candor as compared to the USPTO. • Thus, statements or incomplete data that may be fine for foreign prosecution, could raise a potential inequitable conduct claim in U.S.

20. Patent Prosecution Highway (PPH): What are the Risks • Increased exposure to inequitable conduct claims? (Cont.) • What constitutes “office actions (which are relevant to patentability)” in the OFF may also be unclear in certain cases. • EPO opposition proceedings? • Substance of an examiner interview that lead to an allowance of the application in the OFF? • Must remember that foreign patent offices have different standards relating to duty of candor as compared to the USPTO. • Thus, statements or incomplete data that may be fine for foreign prosecution, could raise a potential inequitable conduct claim in U.S.

21. Patent Prosecution Highway (PPH): Strategic Approaches • Identify eligible pairs of OFF and OSF applications in existing patent families. • For new families, proactively identify filing strategies that will increase the odds that an application an OFF application will be issued in time to be used in an OSF application and maximize the potential number of OFFs.

22. Patent Prosecution Highway (PPH): OSF Strategic Approaches • The number of potential OFF and OSF pairings increase if the initial application is a PCT application. US DO application JPO DO application EPO DO application DO application for other PPH partners

23. Patent Prosecution Highway (PPH): Strategic Approaches • Identify opportunities to enhance PPH benefits with other options. • EPO PACE program • Other accelerated examination programs? • Exploit Patent Offices that may have less backlog (e.g., U.K. and Danish Patent Offices). • Identify patentable subject matter suitable for each program.

24. Conclusion • Patent Prosecution Highway programs can be effectively used as an expressway to allowance. • Adopt strategic approaches to maximize the potential benefits of the PPH programs available to your portfolio. • Be cognizant of potential inequitable conduct issues when the OSF is the U.S.

25. QUESTIONS?

26. Presenter Dave Randall Dickstein Shapiro LLC 2049 Century Park East, Suite 700 Los Angeles, CA 90067-3109 E-mail: RandallD@dicksteinshapiro.com Phone: 1-310-772-8354