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Patent prosecution highway program: European expansion

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As the volume of global patent filings rises, patent offices around the world continue to face increasing patent administration demands. Currently, applicants for U.S. biotechnology and organic chemistry patents can expect an average of close to two years before a first action by the U.S. Patent and Trademark Office (USPTO), and a total average patent application pendency of close to three years. As part of an effort to address the challenges presented by such backlog, on Sept. 22, the USPTO announced the establishment of a one-year Patent Prosecution Highway (PPH) pilot program between the USPTO and the European Patent Office (EPO), effective Sept. 29.

Designed to accelerate patent prosecution procedures already available at both patent offices, the PPH is based on USPTO initiatives intended to reduce examination workload and improve patent quality. Currently, the USPTO participates in PPH programs with the Australian, Canadian, Japanese, Korean and the U.K. patent offices, with the European pilot program being the sixth of such programs. Once a request for participation in the PPH has been granted for a U.S. application, the U.S. examiner examines the application on an expedited basis.

In order for a patent application to be eligible for the PPH, an application must be filed under the Paris Convention, as opposed to the Patent Cooperation Treaty; must meet certain eligibility criteria (including the existence of a corresponding EPO application(s), among other requirements); and the applicant must follow certain procedures. If a request for participation in the PPH is granted, the U.S. application is then advanced for "fast-track" examination ahead of many U.S.-only applications. If any PPH requirement is not met, the applicant has only one chance to correct defects, via a renewed request for participation.

By allowing the USPTO and EPO to share information regarding such corresponding patent applications, the PPH is intended to help the patent offices and applicants avoid streamline processing and redundancies, as part of the USPTO's goal of increasing cooperation and patent protection worldwide.

Submitted by Beni Surpin and Crystina Coats of Sheppard Mullin Richter & Hampton LLP

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