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March 12, 2012

PCT Patent Prosecution Highway (PPH) extended

The European Patent Office (EPO), the US Patent & Trademark Office (USPTO), and the Japanese Patent Office (JPO) have extended the trial period for the trilateral PCT‑PPH pilot programme until 28 January 2014. For patent applicants this is good news.

To obtain protection in several parts of the world, it is most common to first file an international PCT application (PCT = patent cooperation treaty) with eg the EPO. The PCT application will be examined within 30 months during the so-called 'international phase'. The opinion of the EPO acting as the so-called International Search Authority (ISA) is, however, a non-binding opinion, and the PCT-application will not lead to a grant. In order to obtain a patent, the application has to enter the consecutive 'national phase' in which eg a US examiner at the USPTO or a JP examiner at the JPO will re-examine the application. The PCT-PPH enables faster patent examination procedures in the national phase. 

Under the PCT-PPH, an applicant with an application where at least one claim has been determined to be patentable by a first office (i.e. an ISA), can obtain accelerated prosecution of a corresponding application filed with a PPH partner office. When the request for PCT-PPH is filed with the PPH partner office, the applicant must provide copies of the allowable claims from the first office, and the accelerated prosecution at the PPH partner office will be based on those claims. This allows the offices involved to exploit available examination work performed previously. In this way total costs are reduced, and more uniformity among the three offices is achieved, which is, of course, favourable for the applicant. 

To benefit from the PCT-PPH programme, an applicant would need to file a PPH request. The procedures and requirements for filing a request with the JPO and the USPTO for participation in the PCT-PPH pilot programme are available from the JPO website atwww.jpo.go.jp and from the USPTO website at www.uspto.gov, and a request form is available from the EPO website at www.epo.org. Please contact one of the Zacco patent attorneys if you are interested in this specific procedure.

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