INPI-USPTO Patent Prosecution Highway Pilot Program

2. The INPI-USPTO Patent Prosecution Highway Pilot Program Jesus J. Hernandez Patent Attorney Office of Policy and International Affairs Seminario Sobre Projeto Piloto de Exame Copartlhado Prioritario São Paulo, Brazil May 25, 2016

3. Agenda PPH in the US 7 Background @ P Moving Forward

4. Background

5. Presidential Visit: June 30, 2015 • The United States and Brazil agreed to expand economic cooperation by • aligning regulatory standards and • developing single window systems to facilitate trade, • launch a work sharing program on patent applications, and • expand infrastructure investment opportunities for both countries.

6. US-Brazil Joint Statementon Patent Work-Sharing • Official title: Joint Statement Between the Government of the US and the Government of the Federative Republic of Brazil on Patent Work Sharing between Patent Offices • Signed by: MDIC Minister Armando MonteiroNeto, and Secretary of Commerce Penny Pritzker • Recognizes: • that patent work sharing may serve as a driving force for improving patent quality and facilitating the examination of patent application • Acknowledges that patent work-sharing arrangements may contribute to promotion of innovation and investment

7. Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition Announcement and Reception

8. Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition • Implementation: • Staff at both Offices Make official Publications announcing the program • INPI: Revista da PropriedadeIndustrial • USPTO: Official Gazette • Dedicated Websites Go live for both offices • Launch: January 11, 2016.

9. PPHin the US

10. What is PPH? • PPH is a system of work sharing that improves examination efficiency by reducing duplication of effort among patent offices. • PPH enables an applicant who has received a determination of allowable claims from one office to obtain fast track processing of corresponding claims in other offices.

11. PPH modalities PPH Modalities • Original "Paris" PPH Framework • 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 (Office of First Filing -> Office of Second Filing) • PPH MOTTAINAI: • Eligibility based on available work from a participating office on a patent family member, regardless of order of filing (Office of Earlier Examination -> Office of Later Examination) • Patent Cooperation Treaty (PCT) PPH • PCT work product from an patent office acting as a International Searching Authority (ISA) or International Preliminary Examination Authority(IPEA) • Global/IP5 PPH • Multilateral PPH encompassing PPH Mottainai and PPH PCT in a single collaborative framewor.

12. USPTO PPH Agreements:GlobalPPH

13. USPTO PPH Agreements:IP5PPH IP5 PPH • United States Patent and Trademark Office (USPTO) • European Patent Office (EPO) • Japan Patent Office (JPO) • Korean Intellectual Property Office (KIPO) • State Intellectual Property Office of the People’s Republic of China (SIPO)

14. USPTO PPH Agreements:BilateralPPH

15. Number of Examiner Actions Needed to Complete Prosecution at the USPTO Cases completed between January and June 2014 Fraction of Applications

16. Terminal Disposal Comparison betweenPPH and Non-PPH Prosecution Examiner Actions include restrictions, non-final rejection, final rejection, ex parte Quayle, allowance, Interference, SIR disposal, Rule 105 requirement, examiner’s answer, advisory action, miscellaneous action with SSP, first action interview actions, examiner initiated suspension and abandonment after PTAB decision* Cases completed in CY 2013 ** Cases completed between January and June 2014 *** Cases completed between July and December 2014 7

17. The USPTO-INPI PPHAspects of Pilot Program Things to Consider: • PPH at USPTO: • Technology neutral • No limitations on filing dates • No limitations on patent family • PPH at INPI: • Limited to oil and gas technologies • Limited to applications filed at INPI as of January 1, 2013 • Limited to “applications in the same family” as defined by INPI

18. The USPTO-INPI PPHAspects of Pilot Program • Anticipated Drivers for Filing PPH in USPTO • Clean Energy Pilot Program • INPI Prioridade Brazil Pilot Program • Other accelerated examination programs at INPI (startup financing, etc.)

19. Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition PPH Website for PPH Information: www.uspto.gov/web/patents/pph/index.html

20. Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition PPH Website for PPH Information: www.uspto.gov/web/patents/pph/index.html

21. Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition Dedicated USPTO-INPI PPH site includes links to: • Original MOU text • Official Gazette Announcement • USPTO Petition Form • INPI’s Resource page

22. Filing a PPH Petition in the USPTOUSPTO Form Streamlining PPH Processing by Using Common Format

23. Filing a PPH Petition in the USPTO What does the new PPH Form Request from Applicants? • Identifying Information about the Counterpart INPI Application • Most Recent INPI Action • A List of Prior Art cited by INPI • Copies of all prior art that is not a US patent or patent application • A listing of claims correspondence between INPI and USPTO applications and how they correspond with each other.

24. Moving Forward

25. Notable Patenting Metrics *Data from: IP5 Statistics, available at http://www.fiveipoffices.org/statistics/statisticaldata.html

26. Notable Patenting Metrics US Patent Applications v. EPO Patent Applications of Brazilian Origins *Data from: IP5 Statistics, available at http://www.fiveipoffices.org/statistics/statisticaldata.html

27. Notable Patenting Metrics US Applications/Patents with a Named Inventor from Brazil * Data fromUSPTO Office of Patent Information Management, as of 5/20/16 ** Filing Data includes Serialized and RCE applications

28. Notable Patenting Metrics Recipients of 5 or More Utility Patents from Brazil, 2011-2015 * Data fromUSPTO Office of Patent Information Management, as of 5/20/16

29. Notable Patenting Metrics Top US Classes for Applications of Brazilian Origin - IPC *Data from: IP5 Statistics, available at http://www.fiveipoffices.org/statistics/statisticaldata.html

30. Notable Patenting Metrics Top Technology Classes - USPC/Aggregate * Patent origin is determined by the residence of the first-named inventor. Technology class is determined by the primary classification assigned to a patent. Some classes have been combined together under a single class identifier. Please note that the U.S. Patent and Trademark Office has transitioned from the U.S. Patent Classification System (USPC) to the Cooperative Patent Classification System (CPC) and that USPC classifications generally are no longer available for U.S. utility patents that issued after early June, 2015. Therefore, in this report, USPC classifications for utility patents issuing after early June 2015 have been determined as a best estimate based on USPC classifications that were assigned to the associated patent applications during early processing stages and based on other information, as available.

31. For more Information on PPH • For general information concerning PPH, visit www.uspto.gov/web/patents/pph/index.html • If you have specific questions about PPH, please e-mail PPHfeedback@uspto.gov • To receive future USPTO updates on PPH, sign up for USPTO’s e-Commerce e-Alerts by visiting: http://www.uspto.gov/ebc/optin.html

32. Thank You! Jesus J. Hernandez Patent Attorney Office of Policy and International Affairs Email: jesus.hernandez@uspto.gov