Daniel Lent - USPTO

1. 11
AIPLA
Firm Logo
American Intellectual Property Law Association
Updates regarding:
Global/IP5 PPH pilot program at the USPTO
and
Patent Law Treaty (PLT)
Daniel P. Lent
AIPLA JAPAN PRACTICE COMMITEE
Pre-Meeting of AIPLA Mid-Winter Institute
Phoenix, AZ
Tuesday, January 28th

2. 22
AIPLA
Firm Logo
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
2

3. 33
AIPLA
Firm Logo
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. 44
AIPLA
Firm Logo
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. 55
AIPLA
Firm Logo
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. 66
AIPLA
Firm Logo
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. 77
AIPLA
Firm Logo
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. 88
AIPLA
Firm Logo
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. 99
AIPLA
Firm Logo
Who are the Global PPH participants?

10. 1010
AIPLA
Firm Logo
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. 1111
AIPLA
Firm Logo
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. 1212
AIPLA
Firm Logo
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. 1313
AIPLA
Firm Logo
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. 1414
AIPLA
Firm Logo
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. 1515
AIPLA
Firm Logo
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. 1616
AIPLA
Firm Logo
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. 1717
AIPLA
Firm Logo
Mr. Lent’s actual PPH case examples
Filed Appl PPH filed Granted Current Status Time Lapse between Filing Date
and Issue Date (months)
1 WPA0028US 06/18/2010 09/20/2010 Denied:
06/13/2011
ISSUED:
02/15/2012
20
2 SGI0019US 08/31/2009 06/17/2011 07/11/2011 ISSUED:
10/12/2012
40
(16 months between PPH filing and
issue date)
3 LTI0024US 04/18/2012 09/24/2012 11/14/2012 ISSUED:
05/21/2013
13
4 KOY0152US 09/28/2009 07/27/2012 09/07/2012 ISSUED:
05/22/2013
44
(10 months between PPH filing and
issue date)
5 ELL0003US 08/20/2012 08/27/2012 11/01/2012 ISSUED:
05/22/2013
9
6 YKI0376US 03/22/2012 09/05/2012 10/02/2012 ISSUED:
09/11/2013
18
7 YKI0371US 03/22/2012 06/22/2012 08/31/2012 ISSUED:
10/22/2013
19
8 MZP0002US 03/20/2012 06/19/2012 8/17/2012 ISSUED:
11/26/2013
20
9 SGI0043US 03/24/2011 03/24/2011 09/07/2011 Client
Abandoned:
07/13/2012
10 WPA0038US 09/23/2011 01/28/2013 03/12/2013 Client
Abandoned:
08/27/2013
11 YKI0374US 03/22/2012 09/17/2012 09/24/2012 Allowed: 12/9/13
12 IWP0029US 02/25/2011 06/07/2011 06/22/2011 FOA 02/08/2012;
Nguyen, Jimmy
H.
13 UNT0060US 03/14/2013 06/12/2013 07/18/2013 Ex Parte Quayle:
05/28/2013
Vu, Jimmy T.
14 YUA0020US 03/01/2013 04/29/2013 Denied:
07/10/2013
15 YKI0399US 01/25/2013 01/25/2013 Denied:
03/12/2013
16 KKP0028US 07/22/2013 01/07/2014 Pending
17 SAS0254US 11/27/2013 01/07/2014 Pending

18. 1818
AIPLA
Firm Logo
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
18

19. 1919
AIPLA
Firm Logo
19
PPH Benefits
USPTO stats on PPH results compared with all
cases:
Paris-PPH PCT-PPH All Cases
Grant Rate (Allowances/Total
Number of Disposals)
86% 88% 51%
First Action Allowance Rate 26% 20% 14%
Actions per Disposal 2.3 1.6 2.6 - 3.5

20. 2020
AIPLA
Firm Logo
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. 2121
AIPLA
Firm Logo
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. 2222
AIPLA
Firm Logo
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. 2323
AIPLA
Firm Logo
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. 2424
AIPLA
Firm Logo
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. 2525
AIPLA
Firm Logo
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. 2626
AIPLA
Firm Logo
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.pd

27. 2727
AIPLA
Firm Logo
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. 2828
AIPLA
Firm Logo
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. 2929
AIPLA
Firm Logo
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_

30. 3030
AIPLA
Firm Logo
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. 3131
AIPLA
Firm Logo
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. 3232
AIPLA
Firm Logo
Thanks for your attention! Questions?
Daniel P. Lent
Partner,
Japanese Practice Group Leader
Cantor Colburn LLP
dlent@cantorcolburn.com