On January 29, 2010, the USPTO began participating in a new Patent Prosecution Highway (PPH) pilot program with the European and Japanese Patent Offices, in their capacities as PCT International Searching and/or Preliminary Examining Authorities. Under this new PCT-PPH program, certain PCT work product from either of these patent authorities acting in its PCT capacity may serve as the basis for a petition to make special in the USPTO.
The fundamental requirements to qualify are that:
(1) there must have been an indication in the corresponding PCT application that at least one claim has novelty, inventive step, and industrial applicability. This indication must have come in the form of:
(i) a written opinion from the ISA;
(ii) a written opinion from the IPEA; and/or
(iii) an IPER from the IPEA; and
(2) the corresponding U.S. application must contain (or be amended to contain) claim(s) that sufficiently correspond to the claim(s) that were indicated as having novelty, inventive step, and industrial applicability.
Accordingly, effective immediately, Applicants may request participation in the PCT-PPH pilot program by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP) via EFS-Web. The USPTO instructs Applicants to index the form as “Petition to make special under PCT-Patent Pros Hwy”.
Information about all of the current PPH programs (with forms) can be found on the USPTO’s website here.
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© 2010, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com
My impression is that if you start from a U.S. provisional as your priority document, and then file a US non-provisional and parallel PCT both based on that provisional, the Highway programs are not available?