1 / 11

Report on Patent Prosecution Highway

Report on Patent Prosecution Highway. Manny Schecter Chief Patent Counsel schecter@us.ibm.com. Agenda. Our experiences with PPH Usage summary Number of office actions & prosecution period Rate of patent grants Benefits Suggested Improvements. Usage Summary.

dacian
Download Presentation

Report on Patent Prosecution Highway

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Report on Patent Prosecution Highway Manny Schecter Chief Patent Counsel schecter@us.ibm.com

  2. Agenda • Our experiences with PPH • Usage summary • Number of office actions & prosecution period • Rate of patent grants • Benefits • Suggested Improvements

  3. Usage Summary • Over 300 petitions filed to enter PPH • Primary routes: • JP-US PPH • US-JP PPH • PCT PPH • Significant cost savings depending upon path: • Patent office fees to enter PPH • Number of office actions eliminated • Local labor/legal costs

  4. Number of Office Actions & Prosecution Period Number of Period to receive Route Office Actions a 1st OA in OSF/ in an OSF* days JP US PPH 1.2 134 (*1 JP US Non PPH 2.1 966 (*2 US JP PPH 1.3 49 (*3 US JP Non PPH 2.2 1012 (*4 *1 Period from petition for JP US PPH with USPTO to 1st US office action or 1st action allowance *2 Period from US filing date to 1st US office action or 1st action allowance *3 Period from petition for US JP PPH with JPO to 1st JP office action or 1st action allowance *4 Period from request for examination with JPO to 1st JP office action or 1st action allowance

  5. Rate of Patent Grants Route Grant Rate % JP US PPH 82.6 JP US non PPH 72.0 US JP PPH 86.7 US JP Non PPH 69.5

  6. Summary of Benefits (1)Regarding prosecution in OSF • Cost reduction due to decrease of the number of OAs • Increased grant rate • Significant reduction of prosecution period • Simple formality requirement to trigger PPH in OSF (2) Regarding practitioners’ workload in PPH - Early office action in OSF – improves applicant recall of invention, thereby increasing efficiency and quality of prosecution

  7. Suggested Improvements (1) Symmetrical processes Issue: Currently, offices’ requirements for PPH vary. For example, a petition fee is necessary in USPTO while JPO does not require any such fee. Recommendation: Adopt symmetrical processes.

  8. Suggested Improvements (2) Clarification of requirement for “sufficiently corresponding claims” Issue: OSF requires sufficient correspondence of allowed claims in OFF and claims to be examined in OSF, but the standard is not clear. Copying of claims is generally effective to avoid denial of a petition. Recommendation: Clearly define “sufficiently corresponding” .

  9. Suggested Improvements (3) Translations of office actions Issue: Some OSFs require translations of office actions together with petitions for entering PPH. Translation cost is predominant additional cost, but substantially common parts are not standardized and mere cosmetics unduly increase translation expense. Recommendation: Adopt a common office action format.

  10. Suggested Improvements (4) PCT information in WIPO Database Issue: In PCT PPH, a favorable opinion by ISA or IPEA is a condition for initiating examination in OSF. Currently, WIPO provides a database which includes (1) PCT documents in PDF format which are not searchable, and (2) searchable bibliographic data which does not indicate whether opinion is favorable or unfavorable. Recommendation: Facilitate applicants’ search for candidates of PCT PPH by including indications of favorability in the searchable bibliographic data.

  11. QUESTIONS

More Related