Issue 06/26 | May 26, 2006
US-JP Patent Examination Reciprocity Program Begins July 30

Under the Patent Prosecution Highway ("PPH") pilot program starting July 30, 2006, an applicant receiving a ruling from either the JPO or the USPTO office of first filing that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding application. The purpose of the trial program is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at each agency. The trial period is set to expire July 30, 2007, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.

However, in order to be eligible to participate in the PPH pilot program in the USPTO, among other things

  1. The application must claim priority under the Paris Convention to one or more applications filed in the JPO;
  2. Examination of the U.S. application must not have begun;
  3. A copy of the claims that the JPO has determined to be allowable/patentable must be submitted, along with a correspondence table in English showing how all the claims in the U.S. application sufficiently correspond to the allowable/patentable claims from the JPO application;
  4. Office actions and cited references from the JPO must also be submitted; and
  5. A Petition to Make Special must be faxed with the petition fee.

Once the request for participation in the PPH pilot program and special status have been granted to the U.S. application, it will be taken up for examination by the U.S. examiner before all other categories of applications, except those clearly in condition for allowance, those with set time limits, such as examiner's answers, and those that have been granted special status for "accelerated examination."

Full requirements for participation in the trial program at the USPTO can be found here.

The procedures and requirements for filing a request to the JPO for participation in the PPH pilot program are available from the JPO web site at: www.jpo.go.jp/index.htm.

For more information on this topic, please contact William F. Heinze (bill.heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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