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.
When Director Kappos wrote on his blog about international worksharing programs, he also provided a summary of current options for prioritized U.S. examination. While most are well-known, it is good to keep all options in mind when prompt examination is important, such as when a commercial product is on the market (or will be within the average 3-5 year pendency time) or infringement is suspected.
As I wrote earlier this week, Director Kappos is championing international worksharing as a key mechanism for addressing the growing workload facing patent offices around the world. To make worksharing work, the Office of First Filing (OFF) has to examine the application first. This means that patent offices participating in international worksharing programs will be encouraged to give priority to applications for which they are the OFF—usually applications filed by domestic applicants, with no priority claim or a priority claim to a domestic provisional application.
During his first year as Director of the USPTO, David Kappos has championed international worksharing as a key mechanism for addressing the growing workload—and backlog—facing patent offices around the world. Patent Prosecution Highway programs were the first international worksharing initiatives, and a recent announcement on Kappos’ blog indicates that more programs are on the horizon.
Patent Prosecution Highway (PPH) Programs
Each PPH program is based on the same basic principle:
[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.
Since I first wrote about PPH programs a few weeks ago, new programs have been announced with Austria and Spain. The USPTO now has PPH agreements with the following fourteen patent offices:
Australia, Austria, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Russia, Singapore, Spain, United Kingdom
The PCT-PPH program also has expanded, and the USPTO now has PCT-PPH agreements with Austria, Russia and Spain in addition to Europe, Japan and Korea.
PPH programs permit an applicant to expedite examination in one country after the “OFF” (usually the priority country) has determined that at least some of the claims are patentable. To gain entry into a PPH program, the applicant usually must limit the PPH application to the claims that were determined to be patentable by the OFF.
Because of stringent priority, timing and claim requirements, the PPH programs have limited applicability and usefulness. Still, Director Kappos announced at a September 23, 2010 press conference at the WIPO General Assemblies Meetings in Geneva that the USPTO has processed nearly 4,000 PPH applications.
Next Up: SHARE and FLASH
In addition to the applicant-initiated PPH programs, Director Kappos is promoting office-initiated programs such as the Strategic Handling of Applications for Rapid Examination (SHARE) and First Look Application Sharing (FLASH) programs. A one-year SHARE/FLASH pilot program is planned to start this month (October 2010) and will involve about 100 applications per month.
What is SHARE?
Under SHARE, a patent office will “focus examination efforts” on applications for which it is the OFF, so that other offices can benefit from the OFF’s search and examination results.
In some USPTO outlines of how SHARE might work, a non-OFF patent office (an Office of Second Filing, or OSF) could delay examination until at least preliminary search and examination results are available from the OFF. When the USPTO included this concept in its proposed Enhanced Examination Timing Control Initiative, it was soundly criticized by myself and others. It is my understanding that the USPTO plans to withdraw or modify this aspect of its proposed “three track examination” system, but still may adopt a “default rule” for foreign-origin applications that would delay examination until the OFF issues a substantive examination report, unless the applicant requests accelerated examination.
What is FLASH?
FLASH appears to be an internal program that will help the USPTO effectuate its SHARE obligations when it is the OFF. As summarized by the USPTO, FLASH will be initiated when a U.S. applicant files in Europe or Japan, and requests a copy of the U.S. priority document through the existing Priority Document Exchange (PDX) system.
The PDX request will trigger the USPTO to expedite its search and examination of the U.S. application, and the U.S. examiner will be expected to act on the case within three months. The USPTO will notify the EPO and/or JPO when examination has commenced, and will make the results available through the USPTO’s Public Patent Application Information Retrieval (PAIR) system.
The overall goal for SHARE and FLASH is to have U.S. search and examination results within 18-22 months from the U.S. filing date, to facilitate examination in other countries. This is somewhat depressing when you realize that this means that 18-22 months will be the new target for a first Office Action in applications that the USPTO is giving prioritized treatment to meet its own goals.
Will SHARE Result in Examination Efficiencies?
The SHARE program is based on the premise that having search and examination results from the OFF will facilitate examination in the OSFs. However, examination efficiencies will be realized only if :
- The OFF raises issues that are relevant under OSF patent laws.
Many countries differ on what qualifies as prior art, and on the standards for obviousness, enablement, and written description. These differences will limit the ability of an OSF to leverage the work of the OFF.
- The OSF can expend less effort on its own search and examination.
We know that U.S. examiners still will conduct a search and examination in accordance with U.S. requirements and apply U.S. laws, rules and MPEP guidance. This will limit the efficiency gains from having access to the OFF search and examination report.
SHARE may be most effective at identifying novelty-destroying prior art, but applicants already give the USPTO prior art identified in foreign search reports and office actions, to ensure compliance with the duty of disclosure. When a PCT application is filed in parallel to a U.S. application, the U.S. examiner very well may have PCT search results prior to examination even when the USPTO is the OFF. And, while most other countries do not have a duty of disclosure, many examiners in other patent offices already follow a practice of checking PAIR (and other patent office websites) for search and examination reports from other offices, regardless of which office is OFF and which is OSF. (The EPO is launching a new program that will require submission of the OFF search results, if available.) Thus, it is not clear that this complicated program of delaying and synchronizing examination will give examiners information that they don’t already have on hand or at their disposal.
Will SHARE Help Applicants?
Some will say that all applicants will benefit if SHARE is successful at reducing global patent office workloads, but how will SHARE affect a given application?
For a first-filed U.S. application to benefit from SHARE, the applicant also would have to file in the EPO and/or JPO and make a PDX request. Most U.S. applicants enter the EPO and/or JPO via PCT filings, about 30 months after the U.S. priority date. If the U.S. and PCT applications claim priority to a U.S. provisional application, the EPO and JP applications will be filed about 18 months after the U.S. application. If the PDX request is made promptly and the three month examination goal is met, the U.S. application will receive an Office Action about 21 months after filing, which is in accordance with the USPTO’s SHARE/FLASH goals. This amounts to a five month shortcut over the USPTO’s current average time to first Office Action.
The benefit to foreign-origin U.S. applications is murkier. Presumably the EPO and JPO will have programs similar to SHARE and FLASH when they are the OFF, but the USPTO has not announced how it will leverage those search and examination results for U.S. applications. Some applications may be candidates for a PPH program, but will the USPTO expedite prosecution of other applications when EPO and JPO search and examination results are available?
Then there is the impact on U.S. applications that do not qualify for these or other accelerated examination programs. Unless the USPTO really is able to increase overall productivity, prioritized examination of SHARE applications necessarily will translate to further delayed examination of other applications. This may have a particular impact on independent inventors, small businesses and universities who have more limited budgets for pursuing foreign applications.
Making Sure Worksharing Works
Because SHARE and FLASH are internal, USPTO-initiated programs, it may be difficult to obtain information on program operations and results. I hope that the USPTO publishes data throughout the pilot program, and lets us know how it plans to measure its success. Prompt examination reports from the OFF is just the first step. Unless OFF examination reports lead to increased productivity in OSFs (such as through reduced examination time for OSF applications), SHARE may only complicate global patent protection.