Saturday, December 22, 2012

USPTO Opens Patent Prosecution Highway with Taiwan Intellectual Property Office

On December 21, 2012, the USPTO announced its Patent Prosecution Highway (PPH) partnership with the Taiwan Intellectual Property Office.

The USPTO says, "Under the Patent Prosecution Highway (PPH), an 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. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently."

Note on May 25, 2010, the USPTO eliminated the fee for a petition to make special under PPH so it sounds like a good deal.

However, I am not sure how certain circumstances would play out under the US-Taiwan PPH partnership, because PPH is not mentioned in 37 CFR nor in Title 35. For example, if you initially file in the USPTO then file in Taiwan can you use a favorable Taiwanese ruling to fast track the US prosecution (i.e., swap who is the first Office)? This would be desirable, given the USPTO is backlogged and Taiwan is not a member of the PCT and requires a Taiwanese filing within 12 months of the US filing date. Admittedly this issue may only pertain to this PPH partnership because other partnerships among PCT members permit a second application filing up to 30 months from the priority date.

PPH seems to assume participating countries have similar patentability standard. Otherwise, why fast track examination of one country's application based on another country's patentability rulings? Yet even the USPTO and EPO have important differences especially on patentability of software related invention.

In addition, the USPTO has high standards on the content of applicant's petition to expedite examination of an application. Given this is it factually correct to say all claims of a second application "correspond" to a single allowable claim in a first filed application? PPH seems to stretch the term "correspond." Is it a problem? What if the applications overlap but are not identical? Could a defendant successfully argue applicant's statement that claims correspond is false rendering the US patent unenforceable in court? I am not sure and litigation is a harsh place to find out.

Copyright © 2012 Robert Moll. All rights reserved.