The Patent Prosecution Highway (PPH) pilot program between Taiwan Intellectual Property Office (TIPO) and the United States Patent and Trademark Office (USPTO) will be launched on September 1, 2011. Applicants for invention patents that are first filed with USPTO and later filed with TIPO claiming priority to the USPTO application may submit a request for accelerated examination with TIPO, provided the examination result from USPTO contains at least one claim determined to be patentable. Correspondingly, applicants for invention patents that are first filed in TIPO and later filed in USPTO may also submit a request for accelerated examination with the USPTO, provided the examination result from TIPO contains at least one claim determined to be patentable.
“This pilot adds an important partner to the growing PPH network,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The Taiwan Intellectual Property Office represents a rich source of high quality work product. With this pilot, applicants will have greater opportunities to use PPH and benefit from expedited examination and higher patent quality.”
“PPH partnership between TIPO and the USPTO is an inspirational milestone for patent examination,” remarked Mei-hua Wang, Director General of TIPO. “This pilot project fulfills the expectation of patent applicants while lessening the workload of patent examiners. TIPO is pleased to partake in this cooperation for the advancement of a global PPH network.”
PPH is a framework for allowing, on request by the applicant, accelerated examination in an OSF (Office of Second Filing) by utilizing the search and examination results of the OFF (Office of First Filing) for the same invention. These cooperative measures help to avoid duplication of work, so as to shrink patent application backlogs and enhance examination quality. However, the program does not bind either office to approve applications that were initially approved by the partner office.
TIPO’s own Accelerated Examination Program (AEP) allows applicants to apply for expedited examination with their approved USPTO application. This PPH pilot program not only initiates examination cooperation between TIPO and the USPTO, but also allows for faster examination result. This is because this PPH pilot program requires the applicants to amend their scope of claims with TIPO to be the same or narrower in scope than the claims approved by the USPTO, and all subsequent amendments must also satisfy this requirement. Therefore, the condition for applying for expedited examination under PPH is more constricted than that of AEP, allowing for more efficient and faster examination.