In a press release issued July 1, 2011, the USPTO announced pilot changes to the Patent Prosecution Highway (PPH) that will make the PPH much more widely available, and hence much more useful, to many applicants. Most welcome is the change that will permit PPH filings based on an indication of allowability from any participating patent office, not just the patent office of the priority country.
The Patent Prosecution Highway
I previously have outlined the general requirements of the PPH. Under the original program,
[A]n applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF.
This requirement created a roadblock that prevented many applications from being able to access the PPH: only a favorable patentability ruling from the OFF (usually the patent office of the priority application) could be used to gain access to the PHH. If by chance another patent office took up the application for examination first and issued a favorable patentability ruling, that ruling could not be used to enter the PPH.
The PPH MOTTAINAI Pilot Program
The enhanced PPH pilot program is named the “PPH MOTTAINAI Pilot.” According to information on the JPO PPH portal website, “mottainai” is a Japanese term meaning “a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized.” Apparently, the participating patent offices would like to increase utilization of their examination work through the international worksharing framework of the PPH.
As set forth in the USPTO’s press release:
Under the enhanced PPH framework, participation may be requested on the basis of results available on any patent family member from any office participating in this pilot, regardless of whether it was the office where the priority application was filed.
Under the Mottainai PPH pilot program, the examination results of an “Office of Earlier Examination (OEE)” can be used to enter the PPH in an “Office of Later Examination (OLE),” as long as both patent offices are participating in the pilot program.
The following patent offices will participate in the enhanced PPH pilot program:
JPO (Japan), USPTO (USA), UK-IPO (UK), CIPO (Canada), IP Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and SPTO (Spain)
The enhanced PPH pilot program does not encompass PCT workproduct.
The program is set to commence on July 15, 2011, by which time detailed guidance should be available on the USPTO’s PPH webpage.
A Welcome Change
While I still have doubts about the ultimate efficacy of the PPH, opening up the PPH under the Mottainai PPHpilot program should lead to more PPH filings, which should give the USPTO a better understanding of whether the PPH really can serve its goals of enhancing examination efficiency and reducing the global examination workload.