Updates regarding: Global/IP5 PPH pilot program at the USPTO and Patent Law Treaty (PLT)

1. Updates regarding:Global/IP5 PPH pilot program at the USPTOandPatent Law Treaty (PLT) Daniel P. LentAIPLA JAPAN PRACTICE COMMITEE Pre-Meeting of AIPLA Mid-Winter InstitutePhoenix, AZ Tuesday, January 28th

2. PPH Basics • When an applicant receives a ruling from a first office that at least one claim in their application is allowable, the applicant can request to enter the PPH program in a second office • If the request is granted, the second office can use the work done by the first office as a starting point • That PPH case is then fast-tracked in the second office • The second office is now looking at a case where most, if not all, of the major issues should already have been addressed

3. Background; Backlogs in offices around the world began to explode in the late 1990s • The number of applications filed in multiple offices also started to steadily increase • Offices began discussing potential ways to improve efficiencies – focusing on worksharing • PPH began as a pilot in between the JPO and USPTO in 2006 • Today - 30 offices worldwide; 27 with USPTO

4. Global/IP5 PPH pilot program at the USPTO • Start date: January 6, 2014 (so in effect now even though OG Notice and forms are not out yet but will be very soon). Any eligible PPH Request filed now (even using older PPH forms ) will be treated under new Global/IP5 Pilot Program. • Big news is: • Harmonizes the various PPH programs into one USPTO program (no more separate PCT-PPH and PPH programs). • Uses one standardized USPTO PPH Request form (to be released soon). Not one for each country as now. • Uses the common first date rule for related applications (easier to comply with than chain of priority rule). • Uses streamlined procedures like PPH 2.0 did.

5. Global/IP5 PPH pilot program at the USPTO • Recent developments leading to USPTO Global/IP5 PPH pilot program implementation: • During the past year, the IP5 offices, agreed to fully engage in the IP5 PPH process. • while at the same time a number of other offices stated their intention to participate in a uniform, harmonized process now known as the Global PPH.

6. Benefits 1. Cost savings from fewer Office Actions, RCE’s, etc. 2. Higher quality shared search results. For example, a JP Examiner is better at searching JP art in Japanese than an English speaking USPTO examiner is. Then the JP results are shared with the USPTO Examiner. 3. Faster allowances. 4. Claims should be stronger (validity) because of multiple offices reviewing same claims.

7. Who are the IP5? • The European Patent Office (EPO), • The Japan Patent Office (JPO), • The Korean Intellectual Property Office (KIPO), • The State Intellectual Property Office of the People's Republic of China (SIPO), • The United States Patent and Trademark Office (USPTO). • The IP5 Offices account for 90% of all patent applications filed worldwide. See http://www.fiveipoffices.org/about-us.html

8. Global PPH Principles • Global PPH Principles • As a result of the success of the PPH Program, the maintenance of the many individual bilateral agreements between countries has become challenging. • With that in mind, both applicants and participating offices would benefit from a single set of principles that form a world-wide PPH system. In addition, a common framework provides a baseline to which new PPH offices can subscribe without varying from the guidelines established by longstanding PPH partners. The following principles set the foundation for a global PPH system.

9. Who are the Global PPH participants?

10. Strange but so far EPO is not Global PPH but is IP5 Remember: So far EPO is not in Global PPH but is in IP5.

11. Useful benefits and examples • China was still using regular PPH (not mottanai, not PPH 2.0 and not Global PPH). • So case had to be allowed in China first (OFF) before PPH Request to USPTO could be filed. • Also no PPH 2.0 so costly translations needed of claims and copy of SIPO OA needed costly certificate of translator’s accuracy (no machine translation). • China is in IP5, Japan is IP5, and US in IP5 • So now OSF allowance (Japan) can be used at USPTO using 2.0 like translation requirements and fewer need papers. See next slide:

12. Example • File in China first (SIPO) = OFF. • One year later file at JPO and USPTO • Get allowance at JPO (OEE= Office of early Examination)). Maybe also use JPO free accelerated examination. • File PPH Global IP5 Pilot Request at USPTO using easy PPH 2.0 like requirements. • = a lot cheaper for Chinese companies than before

13. Same earliest date can filing or priority date = very good • III. Requirements for Requesting Participation in the Global PPH or IP5 PPH (“Global/IP5 PPH”) Pilot Program in the USPTO • A. Eligibility • In order to be eligible to participate in the Global/IP5 PPH pilot program at the USPTO, the following requirements must be met: • (1) The U.S. application for which participation in the Global/IP5 PPH pilot program is requested must have the same earliest date, whether this is the priority date or filing date, as that of a corresponding national or regional application filed with another Global/IP5 PPH participating office or a corresponding PCT international application for which one of the Global/ IP5 PPH participating offices was the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA).

14. Eligibility continued • (2) The corresponding application has at least one claim indicated by the OEE in its capacity as a national or regional Office, ISA, or IPEA, to be allowable/patentable. A claim determined as novel, inventive, and industrially applicable by the ISA or IPEA has the meaning of allowable/patentable for the purposes of this program.

15. Eligibility continued • (3) All claims in the U.S. application for which participation in the Global/IP5 PPH pilot program is requested must sufficiently correspond to the allowable/patentable claims in the corresponding OEE application. A claim is considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claim is of the same or similar scope as an allowable/patentable claim in the corresponding OEE application. A claim in the U.S. application which is narrower in scope than the claims indicated as allowable/patentable in the OEE application will also sufficiently correspond if presented as a claim dependent upon a claim which is of the same or similar scope as a claim indicated as allowable/patentable in the OEE application. In this regard, a claim that is narrower in scope occurs when an OEE claim is amended to be further limited by an additional feature that is supported by the written description of the U.S. application. Additionally, a claim in the U.S. application which introduces a new/different category of claims than those indicated to be allowable/patentable by the OEE is not considered to sufficiently correspond. For example, where the OEE application contains only claims relating to a process of manufacturing a product, then any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims which sufficiently correspond to allowable/patentable claims in the OEE application.

16. Eligibility continued • (4) Substantive examination of the U.S. application for which participation in the Global/IP5 PPH pilot program is requested has not begun.

17. Mr. Lent’s actual PPH case examples

18. USPTO Focus • USPTO’s goal is to continually improve the program for stakeholders • Increase awareness of the program and its benefits • Results to date: • 25,316 requests for PPH filed since 2006 • In CY13, the average number of new requests per month was up approximately 20% from the previous year

19. PPH Benefits USPTO stats on PPH results compared with all cases:

20. PLT • On October 21, 2013, the USPTO published final rules changes to implement Title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which was enacted as Public Law 112 -211 on December 18, 2012. • Effective date is December 18, 2013. • See “Changes to Implement the Patent Law Treaty” Final Rule 78 Fed Reg. 62368 (October 21, 2013)

21. PLT • History: • The PLT was concluded on June 1, 2000, and entered into force on April 28, 2005. Ratified by US Senate in 2007 but not self-executing treaty. Legislation (Title II of the PLTIA) to amend 35 USC was enacted on December 18, 2012 which was enacted as Public Law 112 -211 on December 18, 2012.

22. PLT • First part of PLTIA implements the Hague Agreement Design Treaty (not this discussed in this presentation) at Title I. • Second part (Title II) of PLTIA (discussed in this presentation) implements the Patent Law Treaty (PLT):

23. PLT The Patent Law Treaty (PLT): • Goals: Harmonizes and streamlines procedures such as: • (1) Relaxed the formal procedures for filing patent applications to obtain a filing date. • (2) Restoration of priority rights up to 14 months • (8 months for design patent) by granted petition. • (3) Time to reply to some OA’s extended.

24. PLT Not best practices – instead emergency procedures for filing patent applications and obtaining a filing date. Can have 112 support and misidentification problems. A non-provisional application(other than a design) with a specification may be filed without claims and/or without drawings or may be filed “by reference” to a previously filed application. See new USPTO ADS form PTO/AIA/14 (12-13) at page 2. * Provisionals never needed a claim (but good idea to include for support in related EP cases for example).

25. New USPTO ADS Form has filing by reference section • Language from new Application Data Sheet (ADS) for PTO/AIA/14(12-13) filing by reference section: • “Only complete this section when filing an application by reference under 35 U.S.C. 111(c) and 37 CFR 1.57(a). Do not complete this section if application papers including a specification and any drawings are being filed. Any domestic benefit or foreign priority information must be provided in the appropriate section(s) below (i.e., “Domestic Benefit/National Stage Information” and “Foreign Priority Information”). • For the purposes of a filing date under 37 CFR 1.53(b), the description and any drawings of the present application are replaced by this reference to the previously filed application, subject to conditions and requirements of 37 CFR 1.57(a).”

26. Nonprovisional applications • For non-provisional applications filed after December 18, 2013 (not design applications) • The US filing date is the date the USPTO receives a specification with or without claims. Drawings also not required to be filed to be entitled to filing date. • However, requirements must be met later and fees paid to avoid abandonment. • See USPTO memo to Examiner’s dated December 13, 2013 at http://www.uspto.gov/patents/init_events/PLT_Memo_to_Examiners_12-13-2013.pdf

27. Design applications still need spec and figures at filing No changes to filing date requirements for design applications. Need specification and required drawings are required at filing as normal for design applications. However, 6 month priority claim deadline can be extended 2 more months (see restoration of priority below)

28. PLT • Restoration of the right of priority to foreign application or a provisional application. • Previous to PLT, mistakenly missing the 12 month drop-dead deadline was not extendible (6 month for design). • Now, via a petition with fee to the Office of Petitions and file your application later, i.e., up to 14 months ( 8 months for Design app). 119(e) (Provisional app priority) and 119(a) foreign priority may be extended up an additional 2 months if the delay in filing the application claiming priority was “unintentional.”

29. Some Office Action response times changed • Response to Restriction Requirement increased to 2 months from 1 month. • see http://www.uspto.gov/patents/init_events/PLT_Memo_to_Examiners_12-13-2013.pdf

30. Late priority claiming up to 2 months later • New 37 CFR § 1.55(c) (for foreign priority claims) and 37 CFR §1.78(b) (for priority claims to provisional applications), which provide for petitions for the restoration of the right of priority when a subsequent application is filed after but within 2 months of the expiration of the priority period. As set forth in the rules, such a petition must include: • The priority claim … in an application data sheet … unless previously submitted; • The petition fee as set forth in Sec. 1.17(m); and • A statement that the delay in filing the subsequent application beyond the priority period was unintentional. • These changes take effect December 18, 2013, and apply to patent applications filed before, on, or after that date. See “Changes to Implement the Patent Law Treaty” Final Rule 78 Fed Reg. 62368 (October 21, 2013).

31. Patent Term Adjustment (PTA) Provision • The PLTIA provides “applicants with additional opportunities to delay the examination process (e.g., the ability to file an application without any claims and to file an application merely by reference to a prior-filed application).” The USPTO has determined that it is appropriate to require “that an application should be placed in condition for examination within eight months of its filing date (or date of commencement of national stage in an international application)” or else be subject to PTA deduction. Thus, 37 CFR § 1.704 is amended to insert new paragraph (c)(11) (and redesignate current paragraphs (c)(11) and (c)(12) as paragraphs (c)(12) and (c)(13), respectively) and add new paragraph (f) to provide for PTA deductions if an application is not complete within 8 months of its filing date.

32. Thanks for your attention! Questions? Daniel P. Lent Partner, Japanese Practice Group Leader Cantor Colburn LLP dlent@cantorcolburn.com