[Federal Register Volume 75, Number 100 (Tuesday, May 25, 2010)]
[Notices]
[Pages 29312-29313]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-12471]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-2010-0031]


Notice Regarding the Elimination of the Fee for Petitions To Make 
Special Filed Under the Patent Prosecution Highway (PPH) Programs

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) is 
eliminating the fee for the petition to make special under the Patent 
Prosecution Highway (PPH) programs. Currently, applicants must pay a 
petition fee under 37 CFR 1.17(h) to have an application to enter into 
the PPH program. With the elimination of the fee, applicants will no 
longer have to pay the petition to make special fee in order to request 
an application enter all current pilot and fully implemented PPH 
programs. The elimination of the petition fee will simplify the PPH 
requirements and is expected to encourage greater PPH participation.
    Since 2006, the USPTO has implemented the Patent Prosecution 
Highway (PPH) programs with a number of patent offices as part of 
efforts to pursue work sharing to avoid duplication of work among 
patent offices, and for reducing its own pendency and backlog. Notices 
regarding the PPH programs are available on the USPTO Web site at: 
http://www.uspto.gov/patents/init_events/pph/index.jsp. Until now, the 
PPH notices have indicated that a request for participation in the PPH 
program must be accompanied by a petition to make special under 37 CFR 
1.102(d) along with the required petition fee set forth in 37 CFR 
1.17(h).
    The PPH applications have proven, on average, to take significantly 
less time to prosecute than non-PPH applications. Using the PPH process 
also increases the sharing and re-use of information (primarily search 
and examination results) between the USPTO and its partner patent 
offices. Improving the PPH framework to make it more user-friendly, and 
thereby encourage greater participation by applicants, would support 
the Office's goal to optimize both the quality and timeliness of 
patents. Therefore, the USPTO has determined that all PPH applications 
will now be advanced out of turn for examination under 37 CFR 1.102(a) 
in order to expedite the business of the Office. Applications that are 
advanced out of turn under 37 CFR 1.102(a) do not require the petition 
fee set forth in 37 CFR 1.17(h). Previously, applications were advanced 
out of turn under 37 CFR 1.102(d).

DATES: Effective Date: May 25, 2010.

FOR FURTHER INFORMATION CONTACT: Magdalen Greenlief, Office of the 
Associate Commissioner for Patent Examination Policy, by telephone at 
571-272-8140, by facsimile transmission to 571-273-8140, or by mail 
addressed to: Mail Stop Comments-Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: PPH is a first concrete implementation of a 
work-sharing framework which was jointly developed by the USPTO and the 
Japan Patent Office (JPO) in 2006 as a pilot project. The objective of 
the PPH is to promote work sharing while at the same time allowing 
applicants to obtain

[[Page 29313]]

patentability determinations faster in multiple jurisdictions. The 
USPTO currently has PPH arrangements with ten patent offices-those in 
Japan, the United Kingdom, the Republic of Korea, Canada, Australia, 
the European Patent Office (EPO), Denmark, Germany, Singapore and 
Finland. Notices regarding the PPH programs with these patent offices 
are available on the USPTO Web site at: http://www.uspto.gov/patents/init_events/pph/index.jsp.
    Under the PPH program, if an application filed in an Office of 
First Filing (OFF) receives an indication that at least one claim is 
patentable, a corresponding application with corresponding claims filed 
in the USPTO as the Office of Second Filing (OSF) may be advanced out 
of turn for examination. To have the request for participation in the 
PPH accepted in the USPTO, an applicant must make available to the 
USPTO the relevant work of the OFF as well as any necessary 
translation. In addition, the request for participation in the PPH, 
until now, had to be accompanied by a petition to make special under 37 
CFR 1.102(d) along with the required petition fee under 37 CFR 1.17(h).
    The PPH has proven to be a useful work-sharing vehicle, as shown by 
the following statistics (as of February 2010):
     Over 2,500 PPH requests received by the USPTO since 2006;
     First action allowance rate for PPH applications is about 
25%, about double the first action allowance rate for all applications;
     Overall allowance rate for PPH applications is about 93%, 
about double the allowance rate for all applications; and
     The average number of actions per disposal for PPH 
applications is about 1.7, which is significantly less than the number 
of actions per disposal for non-PPH applications.
    While the PPH has been useful, it can be improved. The USPTO has 
taken a number of steps, in concert with the Japan Patent Office (JPO) 
and other PPH partners, to enhance the PPH framework to make it more 
user friendly and thereby encourage greater participation. In January 
2010, the USPTO, JPO and EPO began a test implementation of an expanded 
PPH framework, to allow participation of the Patent Cooperation Treaty 
(PCT) national/regional phase applications when the International 
Authority has determined that one or more claims have novelty, 
inventive step and industrial applicability in the international phase. 
Previously, all PPH programs were confined to Paris Convention route 
applications. The expectation is that by expanding the PPH to include 
PCT work products, participation will increase.
    The USPTO is taking additional steps to enhance the PPH framework 
to make the programs more user friendly and thereby encourage more 
participation. All petitions to make special filed with a PPH request 
on or after May 25, 2010 will be treated as a request that the Director 
order their application be advanced out of turn to expedite the 
business of the Office under 37 CFR 1.102(a), and the petition fee set 
forth in 37 CFR 1.17(h) will not be required. If the request for 
participation in the PPH and the request to the Director are granted, 
the application will be advanced out of turn for examination by order 
of the Director under 37 CFR 1.102(a).
    Petitions to make special filed with a PPH request prior to May 25, 
2010 will be treated under 37 CFR 1.102(d) and the petition fee set 
forth in 37 CFR 1.17(h) will be required.

    Dated: May 18, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-12471 Filed 5-24-10; 8:45 am]
BILLING CODE 3510-16-P