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Patent
Prosecution Highway opens between UK Intellectual Property Office and US Patent and Trade Mark Office
As
mentioned in our report on the Patent Prosecution Highway (PPH) between the UK and Japan, the PPH between the UK and US opened on 4 September 2007 for an initial period of one year.
The
procedure allows an applicant for a UK patent to request accelerated
examination of a corresponding US patent application, providing an
examination report has issued on the UK application indicating that at least
one of the claims is allowable. The applicant of a US patent application can similarly
request accelerated examination in the UK. For UK patent applicants with a corresponding
patent application in the US, this is a great opportunity to speed-up
prosecution of the US patent application which is generally
much slower than in the UK.
The
intention of the PPH is to enable one Patent Office to avoid repeating work
carried out by another Patent Office and to reduce the time applications are pending
before grant.
In
order to validly request accelerated examination under the PPH in the UK or US, an examination report must have
issued for the equivalent application in the other country, and must give an
indication that one or more claims are patentable. All the claims of the
equivalent patent application must then correspond sufficiently to those
indicated as allowable in the other jurisdiction.
The
initial (either US or UK) examination report is not considered
as binding on the other jurisdiction, but should be considered persuasive.
Differences in patent law between the jurisdictions, for example, may mean that
claims deemed allowable in one country are not deemed allowable in the other.
There
are currently delays in examining patent applications at the US Patent Office
due to a back log of cases. Examination is generally relatively quick at the
UK-IPO. Indeed, if combined search and
examination is requested on filing a UK patent application, an examination
report can be expected to be issued within 4 to 5 months and often less. PPH is therefore likely to be of most use
where there is an initial UK patent application and prompt
examination is required on a corresponding application in the US.
From the US perspective, this is one of a number of
initiatives to attempt to reduce the workload of the USPTO to decrease the
pendency time of patent applications there.
Further
information can be found on the UK-US PPH on the UK-IPO website by clicking
here and on the USPTO website by clicking here.
Reddie
& Grose
September
2007
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