Tag:  “PPH”  | (8) posts

 New Patent Prosecution Highway agreement between the DKPTO and China’s SIPO

Since the beginning of 2013 a new PPH agreement enables Danish patent applicants to obtain a patent in China in a faster and more cost-effective way.

On 1 January 2013 a PPH agreement on a pilot project basis came into effect between the Danish Patent and Trademark Office and the Chinese State Intellectual Property Office, enabling patent applicants who have obtained a decision to grant from the DKPTO to request accelerated proceedings at the SIPO.

The number of PPH agreements in which the DKPTO takes part now totals 7, the other PPH agreements being with the patent offices of Canada, USA, Russia, Japan, South Korea and Israel.

Furthermore, it is worth mentioning that the final months of 2012 also saw the Czech and Colombian patent offices entering the PPH network, both signing agreements with the USPTO.

As always, we shall endeavour to keep our readers updated on further developments. 

Link to the DKPTO-SIPO PPH-agreement

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

As mentioned in my previous blog entry dated 23 January 2012, the DKPTO announced that due to user demand efforts to establish a PPH-agreement with the Russian Patent Office had been initiated.

Now, the efforts have matured into a PPH-agreement between DKPTO and ROSPATENT, which entered into force on 1 February 2012. Prosecution via the PPH agreement may not only be requested at both offices based on national work products, but also at the DKPTO, based on work products from ROSPATENT acting as an international searching or preliminary examination authority under the PCT.

I can also add that another PPH agreement entered into force on 23 January 2012, namely between China’s SIPO and Germany’s DPMA.

Link to the DKPTO-ROSPATENT PPH-agreement

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

The year of 2012 has arrived with new possibilities for Danish patent applicants who wish to obtain a patent abroad in a faster and more cost efficient way:

A PPH-agreement, on a pilot project basis, between The Danish Patent and Trademark Office (DKPTO) and the Israeli Patent Office has taken effect from 5 January 2012, thus enabling patent applicants to request accelerated proceedings at the ILPO once they have obtained a decision to grant from the DKPTO.

Also, the DKPTO has announced that due to user demand efforts to establish a PPH-agreement with the Russian Patent Office have been initiated. It is expected that a PPH-agreement between DKPTO and ROSPATENT will enter into force on 1 February 2012.

Read more about the DKPTO-ILPO PPH-agreement.

As always, we shall endeavour to keep our readers updated on further developments.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

This week has so far been one of the most interesting weeks in the Specialist programme (soon to be renamed to the Trainee programme). Topics of the week include infringement, opposition and sales training, not to mention a trip to the Copenhagen office. The latter definitely being one of the highlights of the week.

The Copenhagen office is situated in the eastern part (Østerport) of the city in an old genuine building. The topic of the day was foreign filing which turned out to be a very interesting subject. Acceptance date, PPH (Patent Prosecution Highway), heavy prosecution countries and restriction requirements were all new expressions for the most of us. We found out that there is a lot more to know than EPC and Swedish patent law. Strategic decisions, for example using utility models instead of patents, were especially interesting. And although we didn’t get a hold of any Danish pastry, we had the pleasure to enjoy a Grøn Tuborg.

To analyze claims from another perspective – like when to file an opposition – was the topic of today. Arguing why a claim should not be valid instead of the opposite differed from what we are used to and resulted in many intriguing discussions. Hopefully, it will be more time to deal with oppositions in the upcoming practice period.

Soon, it’s time for sales training and I’m convinced that it will be as instructively as always.

Oskar Kronsell, Associate

As I mentioned in my blog entry of 19 september, the number of PPH-agreements has increased, introducing new possibilities for accelerated prosecution.

Sweden’s Patent- och Registreringsverket and Nordic Patent Institute entering the PPH-network

Three new patent offices have entered the PPH-network. The three new offices are PRV (Sweden, PCT-PPH with JPO and USPTO), The Nordic Patent Institute (PCT PPH with USPTO) and ILPO (Israel, national PPH with USPTO). Also, a number of new PPH agreements between existing PPH participators have been launched, particularly relating to the use of PCT work products for requesting accelerated prosecution under the PPH (so called PCT-PPH agreements).

The complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:

Link to the PPH-web page: http://www.jpo.go.jp/ppph-portal/index.htm

Troels Peter Rørdam, European Patent Attorney, Awapatent

According to a USPTO press release, the intellectual property offices of China (SIPO) and USA (USPTO) have signed a Memorandum of Understanding on 19 May 2010, which includes establishing a bilateral Patent Prosecution Highway (PPH) agreement between the two offices.

The PPH agreement will be SIPO’s first, thus driving China onto the Patent Prosecution Highway and opening up for the SIPO and the USPTO taking advantage of each other’s examination results to achieve a faster prosecution of patent applications.

Further new PPH-agreements
Furthermore, four new PPH-agreements have been established in 2010 so far, namely between Finland (NBPR) and South Korea (KIPO), NBPR and Hungary (HPO), Germany (DPMA) and KIPO (to take effect on 1 July 2010) and, most notably, between the EPO and Japan (JPO).

Thus, the complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:

PPH-web page 

USPTO press release

Troels Peter Rørdam, Associate Patent Attorney

The concept of PPH was originally proposed by the Japanese Patent Office (JPO) as a bilateral agreement between the patent offices of two countries on using each other’s search and examination results in treating analogous patent applications, thereby allowing applicants in both offices to obtain analogous patents faster and more efficiently.

The first PPH was established in July 2006 as a pilot project between the JPO and the United States Patent and Trademark Office (USPTO), and was made permanent in January 2008. Since then numerous other PPH’s have been established between different patent offices, most being at the time of writing on a pilot project level. For instance the JPO has since then made PPH agreements with the national patent offices of such countries as Denmark, United Kingdom, Germany and South Korea. Also the USPTO and the European Patent Office have made a PPH agreement.

In 2007 the KIPO of South Korea and the UK-IPO of United Kingdom joined the group of PPH countries, and USPTO, JPO, KIPO and UK-IPO now all have mutual PPH agreements.

The number of countries having PPH agreements accelerated in 2008 seeing the national patent offices of Denmark, Germany, Canada and Australia, as well as the European Patent Office, joining the PPH family.

The newest members of the PPH family are the national patent offices of Russia, Finland, Austria, Singapore and Hungary who all joined in 2009. It is also planned in 2010 that PCT applications will be able to benefit from the PPH co-operation between the world’s three biggest IP authorities: the EPO, the United States Patent and Trademark Office (USPTO) and the JPO.

More PPH agreements are in the melting pot, and most likely new countries will join the PPH family in the future. Particularly, it is worth mentioning that the Danish Patent and Trademark Office is working actively to obtain further PPH agreements.

A complete overview of existing and considered PPH agreements at the time of writing can be seen on the graphic below, courtesy of the web page of the Japanese Patent Office:

The concept of PPH was originally proposed by the Japanese Patent Office (JPO) as a bilateral agreement between the patent offices of two countries on using each other’s search and examination results in treating analogous patent applications, thereby allowing applicants in both offices to obtain analogous patents faster and more efficiently.

The first PPH was established in July 2006 as a pilot project between the JPO and the United States Patent and Trademark Office (USPTO), and was made permanent in January 2008. Since then numerous other PPH’s have been established between different patent offices, most being at the time of writing on a pilot project level. For instance the JPO has since then made PPH agreements with the national patent offices of such countries as Denmark, United Kingdom, Germany and South Korea. Also the USPTO and the European Patent Office have made a PPH agreement.

In 2007 the KIPO of South Korea and the UK-IPO of United Kingdom joined the group of PPH countries, and USPTO, JPO, KIPO and UK-IPO now all have mutual PPH agreements.

The number of countries having PPH agreements accelerated in 2008 seeing the national patent offices of Denmark, Germany, Canada and Australia, as well as the European Patent Office, joining the PPH family.

The newest members of the PPH family are the national patent offices of Russia, Finland, Austria, Singapore and Hungary who all joined in 2009. It is also planned in 2010 that PCT applications will be able to benefit from the PPH co-operation between the world’s three biggest IP authorities: the EPO, the United States Patent and Trademark Office (USPTO) and the JPO.

More PPH agreements are in the melting pot, and most likely new countries will join the PPH family in the future. Particularly, it is worth mentioning that the Danish Patent and Trademark Office is working actively to obtain further PPH agreements.

A complete overview of existing and considered PPH agreements at the time of writing can be seen on the graphic below, courtesy of the web page of the Japanese Patent Office:

Troels Peter Rørdam, Associate

The Patent Prosecution Highway (PPH) is a concept originally proposed by the Japanese Patent Office (JPO). PPH has the purpose of increasing the speed and improving the quality of the prosecution of patent applications. This is achieved in that the patent offices of two countries make an agreement to use each other’s search and examination result when prosecuting analogous applications.

A PPH is thus a bilateral agreement between the patent offices of two countries on using each other’s search and examination results in treating analogous patent applications. The three leading national patent offices as regards making PPH agreements are the Japanese Patent Office, the Korean Intellectual Property Office and the United States Patent and Trademark Office, mutually having made PPH agreements on a permanent basis.

Seen from a local point of view, the possibilities of the PPH are mostly relevant for applicants having an interest in Denmark, as the Danish Patent and Trademark Office (DKPTO) has made PPH agreements on a pilot project basis with each of the above mentioned three leading national patent offices.

Amongst other countries having made PPH agreements are e.g. Finland, Germany, United Kingdom and Russia.

Applicants who wish to obtain a patent for a given invention in two countries that have established a mutual PPH may thus take advantage of this PPH. A PPH may generally be used when the patent office of the country in which the applicant first filed his patent application has found that the claims of the patent application patentable.

Thereby the applicant may achieve a faster prosecution, and ultimately hopefully a patent, at the patent office of the second country. Simultaneously, the amount of correspondence with the second country’s patent office should expectedly decrease, which should in turn expectedly mean that the applicant could save resources by using a PPH.

It is generally possible to use PPH on national patent applications, and for most of the existing PPH’s, including those of the DKPTO, on international (PCT) patent applications having been continued nationally.

Troels Peter Rørdam, Associate