Tag:  “PPH”  | (12) posts

The IP5 launch a PPH pilot programme

According to the EPO, the world’s five largest Intellectual Property Offices, called IP5, have announced the agreement to launch a comprehensive IP5 Patent Prosecution Highway (PPH) pilot programme, IP5 PPH, intended to take effect in January 2014. 

The IP5 are the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean IP Office (KIPO), the State IP Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO).

When entering into effect the IP5 PPH programme thus means that the EPO will have PPH agreements with not only the JPO and the USPTO but also with the KIPO and the SIPO. This offers new interesting possibilities for applicants using the EPO as the office for first filing of patent applications and desiring accelerated examination of their corresponding patent applications outside Europe.

The IP5 PPH programme will utilise of both PCT and national work products. Also, the PPH arrangements currently operational between any two of the IP5 offices will be integrated in the IP5 PPH programme.

The details of the IP5 PPH programme are not yet published, but as always the Awapatent IP Blog will follow the developments.

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

Link to the press release of the EPO regarding the IP5 PPH programme

New Global Patent Prosecution Highway to be launched to simplify use

Using the Patent Prosecution Highway (PPH) for obtaining accelerated examination is set to become considerably simpler as 13 Intellectual Property Offices around the world announce the intent to launch a Global Patent Prosecution Highway (GPPH) arrangement to be taking effect as of 6 January 2014.

The 13 offices include the Danish Patent- and Trademark Office (DKPTO) and the Nordic Patent Institute (NPI), the GPPH thus being of particular interest to Danish patent applicants and others using these offices as the office for first filing of patent applications. The remaining 11 offices are the IP offices of Australia, Canada, Japan, South Korea, USA, Russia, Spain, UK, Finland, Norway and Portugal.

The GPPH arrangement will be based on one common set of requirements, which are to be based upon the requirements of the already exisiting PPH MOTTAINAI principle. The PPH MOTTAINAI has been described previously by the Awapatent IP Blog in more detail – see here.

Most notably, this means that applicants may request accelerated examination at any of the offices participating in the GPPH based on a set of claims accepted for grant at any of the other offices participating in the GPPH. Thus, more possibilities for requesting accelerated prosecution will arise. For example, the DKPTO and the NPI has not previously had any PPH agreements with IP Australia.

The GPPH arrangement will apply to the use of both PCT and national work products. Also, the GPPH will take precedence over any already existing PPH arrangements.

The Awapatent IP Blog will monitor the developments of the GPPH with interest to keep our readers updated. 

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

Link to the release of the GPPH arrangement at the PPH-website maintained by the JPO

Patent Prosecution Highway: New possibilities for Swedish patent applicants

Swedish patent applicants and others using the Swedish Patent- och registreringsverket (PRV) as the office for first filing of patent applications are getting new possibilities for obtaining accelerated prosecution of their following foreign patent applications; the PRV are expanding their participation in the international PPH network with a number of new PPH agreements.

Effective 1 October 2013 the PRV together with the JPO launched their first PPH agreement using national work products.

Furthermore, the PRV and the Korean IP Office (KIPO) have signed pilot PPH agreements using both national and PCT work products. These pilot agrements will, according to the PRV website, take effect on 1 January 2014.

Finally, the PRV also plans on signing a pilot PPH agreement using national work products with the USPTO. This pilot agreement is, again according to the PRV website, planned to enter into force on 1 January 2014.

Hence, so far it is now, or will within short be, possible to request accelerated prosecution of a Japanese, Korean or US patent application claiming priority of a Swedish patent application based on the examination results of the PRV. Furthermore, it is not unlikely that more PPH agreements will follow – and in any event the Awapatent IP Blog will follow the developments. 

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

Link to the PPH site of the PRV

Changes in the Patent Prosecution Highway agreement between DKPTO and CIPO

Effective 30 July 2013, the part of the PPH-agreement between The Danish Patent- and Trademark Office (DKPTO) and The Canadian Intellectual Property Office (CIPO) applicaple for applicants using the DKPTO as the Office of First Filing, i.e. typically Danish applicants, has been changed by the CIPO to have the same requirements as a PPH MOTTAINAI agreement. The PPH MOTTAINAI has been described previously by the Awapatent IP Blog in more detail – see here.

Thus, within one patent family, irrespective of the origin of the priority application(s), it is now possible to use a positive examination result originating from any of the offices with which the CIPO has a PPH agreement to request prosecution under the PPH at the CIPO.

Simultaneously, the part of the agreement applicaple for applicants using the CIPO as the Office of First Filing, i.e. typically Canadian applicants, has been upgraded to a so-called “PPH-agrement version 2.0”.

The PPH-agrement version 2.0, which the Awapatent IP Blog has described previously in more detail here, introduces the significant simplification that it no longer matters which office is the Office of First Filing and Office of Second Filing, respectively.

Hence, it is now also possible to use the examination result of the Office of Second Filing to request examination under the PPH at the Office of First Filing.

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

Link to the DKPTO-CIPO PPH-agreement version 2.0:
At DKPTO: http://internationalcooperation.dkpto.org/patent-prosecution-highways/pph-between-denmark-and-canada.aspx
At CIPO: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02163.html

New DK Patent Prosecution Highway-agreement

 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

 

New Patent Prosecution Highway Agreement between the DKPTO and Russias ROSPATENT enters into force

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

New PPH-agreement between Denmark and Israel

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

A visit to the Copenhagen office

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

Patent Prosecution Highway – Sweden and NPI entering the PPH-network

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:

PPH map

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

Troels Peter Rørdam, European Patent Attorney, Awapatent

China to drive on to the Patent Prosecution Highway

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