Two very helpful things were announced this summer by the USPTO: (1) as of May 25, 2010, the petition fee for the Patent Prosecution Highway (PPH) was waived, and (2) as of June 1, 2010, the PCT Patent Prosecution Highway (PCT-PPH) includes the Korean Intellectual Property Office (KIPO). These updates are well received because a PCT "international" application having a search report and written opinion from a PCT International Search Authority (ISA) finding one or more claims patentable qualifies its US counterpart non-provisional application for advancement in the US Patent Office examination queue - so long as: (a) the US non-provisional patent application contains claims corresponding to, or narrower than, the PCT-patentable claims, and (b) the PCT ISA was the European Patent Office (EPO), KIPO, or the Japan Patent Office (JPO).
Presently, KIPO is selected from a group, including the US, EPO, and IP Australia, as the ISA in about 30% of PCT applications originating from the US. In addition, KIPO is the least expensive ISA available to the US PCT applicant, and KIPO is fully competent to search all classes of US statutory subject matter. KIPO is also quite timely in its role as ISA, and so one can expect a search report and written (patentability) opinion either: nine months from the filing of the PCT application without a Paris Convention priority document, or within about sixteen months from the PCT application's earliest Paris Convention priority document filing date.
If less than all of the claims of the PCT application are found to be patentable by EPO, JPO, or KIPO as the ISA, the US practitioner may consider conforming a previously filed counterpart US application via a preliminary amendment before filing the PCT-PPH request. A PCT Chapter II demand could be filed with amended claims, but the international preliminary examination report for the PCT-PPH request may not be available until 28 months from the earliest Paris Convention priority document filing date. The US practitioner should be mindful that "102(e) -like" references are not used in determining PCT patentability (although they may be specifically mentioned in the search report), and means-plus-function claims are read broadly by the PCT examiner. So, while the PCT application extends prospective international patent rights and while the PPH provides a process for advancing a corresponding US application, the PCT-PPH advancement process is not a full faith and credit process of US claim allowance. That is, a favorable ruling of patentability for a least one claim of the PCT application does not provide a basis for automatic allowance of the corresponding US case.
Generally, the USPTO allows PPH cases at a rate double that of non-PPH cases. When compared with non-PPH cases, PPH cases are "disposed" (granted, abandoned) by the USPTO with about one less Office action (1.7 versus 2.7). As of August 2010, a correctly completed request to participate in the PCT-PPH program based on a KIPO written opinion is granted in one business day by the USPTO. Thereafter, the corresponding US application, whether it be a US application filed before the PCT application, a national stage entry (with a request for early processing of the international application under 35 USC §371(f)), or a national stage bypass application, will be advanced from the Examiner's new application (long) queue to the top of Examiner's amended (short) queue called the "special" category.
A petition granted under the Accelerated Examination (AE) Program may cause the US application to be taken up by the examiner within two weeks of the grant, whereas the US case advanced on the basis of a granted PPH request falls directly behind the AE cases - atop the remainder of the amended queue. But, the PPH program is not the Accelerated Examination Program, and so requires neither a pre examination search statement nor an accelerated examination support document. So, if applicants can tolerate publication of their pending utility patent applications, would like to keep PCT member patent offices in play, and are concerned about the costs for, and statements made in, a petition for accelerated examination in the US, then perhaps the applicants might consider the PCT-PPH to advance their corresponding US non-provisional patent applications.
