Effective September 29, 2008, the USPTO began a Patent Prosecution Highway (PPH) pilot program with the European Patent Office (EPO).

The new pilot program enables the USPTO to share search results in applications filed in both the U.S. and Europe, and follows similar programs with intellectual property offices in Japan, the United Kingdom, Canada, Korea, and Australia. The purpose is to allow applicants whose claims are determined to be allowable in a first office to have a second office use the search and examination results, and accelerate consideration in the second office.

For example, assume that an application filed in the USPTO claims priority to an earlier EPO application, and the EPO application includes at least one allowable claim. In such a case, the applicant may ask to participate in the PPH pilot program in the USPTO, and petition to make the U.S. application special under the PPH pilot program. If the petition is granted by the USPTO, it will advance the U.S. application out of turn, and it will use the search and examination results from the EPO application during the examination of the U.S. application.

To be eligible to participate in the PPH pilot program, the U.S. application must be a Paris Convention application that claims priority to one or more applications already filed in the EPO. (The PPH pilot program is not available for PCT international applications (including U.S. National Phase applications filed under 35 USC 371).) The underlying EPO application must have at least one allowable claim, as indicated in an EPO Office Action or in a positive Extended European Search Report. Further, all of the claims in the U.S. application must correspond or be amended to correspond to claims in the EPO application. Differences in claim format are acceptable, assuming the claims are of the same or similar scope. A claims correspondence table in English is required.

To participate in the PPH pilot program, the applicant must file the appropriate request form, available on the PTO’s web site. If the PTO has already begun to examine the U.S. application before the request is filed, the application is not eligible to participate in the PPH pilot program. Additionally, the applicant must provide copies of all Office Actions issued in the corresponding EPO application, and submit an information disclosure statement (IDS) listing all documents cited by the EPO examiner.

If the request for participation and special status is granted, then the applicant will be notified, and the U.S. application will be advanced out of turn for examination.

The PPH pilot program may be particularly useful for applicants in the USPTO that are looking for a less stringent and costly way of expediting the examination process than the USPTO’s existing accelerated examination procedure. More information is available on the USPTO website at: www.uspto.gov/web/patents/pph/pph_epo.html.