1 PATENT LAW Randy Canis CLASS 13 Part 1 International Prosecution. - [PPT Powerpoint] (2024)

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PATENT LAW

Randy Canis

CLASS 13Part 1

International Prosecution

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International Prosecution

• How are patents obtained in other countries?

• What treaties enable foreign counterpart patent applications?

• What parts of US Patent Laws affect?

• What issues exist relative to priority?

• How do we use treaty procedures?

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International Prosecution

“Foreign Patents”International Patent Procedures

International Patent TreatiesEuropean Patent Procedures

International Problems & SolutionsQuestions of Priority

Comparisons with US Law

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Why are foreign patents sought?• US enterprises wish to sell or export or

license in selected other countries or that do or wish to do business globally.

• Entities in foreign countries seek US patents for the same reasons.

• We are all increasingly part of global economy - and so we file “foreigns” to improve our position in global economy.

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What is meant by filing “foreigns?”

• What is meant by filing “foreigns" is initiating (filing) analogous patent applications in countries or treaty region

• foreign to USA according to the patent laws and procedures in that country or countries or treaty region

• for purposes of obtaining patent protection there.

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In what countries or treaty regions do we seek patents?

• In those countries where there are, might be, or will be prospects for commercial activities, such as distribution, sale or licensing by patent owner or licensee.

• Where it is practical and affordable to do so.• Can afford costs: foreign atty. services &

govt. fees for filing, prosecution, annuities, grant fees, & translations to/from other languages.

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“Uncle Sam” may I?

• May you simply take your invention to a patent attorney in another country, and ask that a patent country be filed?

• Must not export w/o an export license. To do so, filing would run afoul of the export laws and export rules administered by US Commerce Department.

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If patent application filed w/o permission?

• Violation of such laws is federal offense. So . . .

• Before sending a patent application to another country you will need an EXPORT LICENSE, which takes the form of a FOREIGN FILING LICENSE.

• How is it obtained?

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If no U.S. patent application is on file

• If no corresponding national or international patent application has been filed, must petition USPTO Trademark Office for a foreign filing license. Difficult?

• Not difficult. Requires that . . .

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If no U.S. patent application is on file

• Patent lawyer submits petition together with legible copy of material upon which a license is desired; then:

• When export license is granted (weeks or months), copy of material submitted represents scope of the information which can be the subject of a foreign patent application.

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But If U.S. patent application already is on file

• US patent application is used as a basis for filing for corresponding patent rights in a foreign country, because:

• US patent application is treated as a petition for the granting of a foreign filing license, which is usually granted. And...

• International treaty application filing in USRO of USPTO also possible.

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When U.S. patent application already is on file

US provisional or non-provisional (utility) patent application is used as a basis for filing for corresponding patent rights in a foreign country, priority can be obtained under the Paris Convention (dating from 1883) which accords to the US applicant priority of the US application for one year (6 mo. for design appls.)

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Modern treaties for international filing

In addition to The Paris Convention over last few decades, international treaties have streamlined and made more economical procedures for seeking protection in many parts of the world. USA has signed, acceded to, or ratified many treaties

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Some international treaties

The Paris Convention Patent Cooperation Treaty (PCT) European Patent Convention (EPC) Others treaties for regional patent rights TRIPS Agreement on Trade-Related

Aspects of Intellectual Property Rights patent term 20 yrs. from filing everywhere

WIPO

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Paris Convention• Effect is one of giving priority. • Allows applicant(s) to file in U.S. or

other home country signatory to treaty.• Provides a priority effect of 12 months

(6 mo. for designs) in which to file corresponding application elsewhere equivalent to national filing.

• Based on whole content of application.

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Paris ConventionArticle 4, Section A

1. Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

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Paris ConventionArticle 4, Section A

2. Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

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Paris ConventionArticle 4, Section B

. . . [A]ny subsequent filing in any of the other countries of the Union before the expiration of the [above] periods shall not be invalidated by reason of any action accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sales of copies . . .

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Paris ConventionArticle 4, Section C

• C.-(1) The periods of priority referred

to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.

(2) . . . periods . . . start from the date of filing [the] first application; the day of filing [is] not included...

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Paris ConventionArticle 4, Section C

C.-

(3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.

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Paris ConventionArticle 4, Section C

C.-(4) A subsequent application

concerning the same subject as a previous first application . . . filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority,. [cont’d]

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Paris ConventionArticle 4, Section C

C. (4)[cont’d] if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

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Modern treaties

Treaties signed by USA specifically related to patents: Patent Cooperation Treaty (PCT) European Patent Convention (EPC) Other treaties relating to regional rights TRIPS (WTO’s Agreement on Trade-Related

Aspects of Intellectual Property Rights) WIPO

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Patent Cooperation Treaty

• Basics:• One application for 137 countries• Compliance with form in PCT is a

valid filing in all 137 countries• Own language – delay translation

fee• Optional Search Report – decide

if and where to apply for patent

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PCT Countries

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PCT Countries• AE United Arab Emirates• AG Antigua and Barbuda• AL Albania1• AM Armenia (EA)• AT Austria (EP)• AU Australia• AZ Azerbaijan (EA)• BA Bosnia and Herzegovina1• BB Barbados• BE Belgium (EP)2• BF Burkina Faso (OA)2• BG Bulgaria (EP)• BH Bahrain• BJ Benin (OA)2• BR Brazil• BW Botswana (AP)• BY Belarus (EA)• BZ Belize• CA Canada• CF Central African Republic (OA)2• CG Congo (OA)2• CH Switzerland (EP)• CI Côte d’Ivoire (OA)2• CM Cameroon (OA)2• CN China• CO Colombia• CR Costa Rica• CU Cuba• CY Cyprus (EP)2• CZ Czech Republic (EP)• DE Germany (EP)• DK Denmark (EP)• DM Dominica• DZ Algeria• EC Ecuador• EE Estonia (EP)• EG Egypt• ES Spain (EP)• FI Finland (EP)• FR France (EP)2• GA Gabon (OA)2

• GB United Kingdom (EP)• GD Grenada• GE Georgia• GH Ghana (AP)• GM Gambia (AP)• GN Guinea (OA)2• GQ Equatorial• Guinea (OA)2• GR Greece (EP)2• GT Guatemala• GW Guinea-Bissau (OA)2• HN Honduras• HR Croatia1• HU Hungary (EP)• ID Indonesia• IE Ireland (EP)2• IL Israel• IN India• IS Iceland (EP)• IT Italy (EP)2• JP Japan• KE Kenya (AP)• KG Kyrgyzstan (EA)• KM Comoros• KN Saint Kitts and Nevis• KP DemocraticPeople’s Republic of Korea• KR Republic of Korea• KZ Kazakhstan (EA)• LA Lao People’s Democratic Republic• LC Saint Lucia• LI Liechtenstein (EP)• LK Sri Lanka• LR Liberia• LS Lesotho (AP)• LT Lithuania (EP)• LU Luxembourg (EP)• LV Latvia (EP)2• LY Libyan Arab Jamahiriya• MA Morocco• MC Monaco (EP)2• MD Moldova (EA)• ME Montenegro

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PCT Countries• MK The former Yugoslav Republic of Macedonia1• ML Mali (OA)2• MN Mongolia• MR Mauritania (OA)2• MT Malta (EP)2• MW Malawi (AP)• MX Mexico• MY Malaysia• MZ Mozambique (AP)• NA Namibia (AP)• NE Niger (OA)2• NG Nigeria• NI Nicaragua• NL Netherlands (EP)2• NO Norway• NZ New Zealand• OM Oman• PG Papua New Guinea• PH Philippines• PL Poland (EP)• PT Portugal (EP)• RO Romania (EP)• RS Serbia1• RU Russian Federation (EA)• SC Seychelles• SD Sudan (AP)• SE Sweden (EP)• SG Singapore• SI Slovenia (EP)2• SK Slovakia (EP)• SL Sierra Leone (AP)• SM San Marino• SN Senegal (OA)2• SV El Salvador• SY Syrian Arab Republic• SZ Swaziland (AP)2• TD Chad (OA)2

• TG Togo (OA)2• TJ Tajikistan (EA)• TM Turkmenistan (EA)• TN Tunisia• TR Turkey (EP)• TT Trinidad and Tobago• TZ United Republic of Tanzania (AP)• UA Ukraine• UG Uganda (AP)• US United States of America• UZ Uzbekistan• VC Saint Vincent and the Grenadines• VN Viet Nam• ZA South Africa• ZM Zambia (AP)• ZW Zimbabwe (AP)

• 1 Extension of European patent possible.• 2 May only be designated for a regional patent (the

“national route” via the PCT has been closed).• Where a State can be designated for a regional patent,

the two-letter code for the regional patent concerned is indicated in parentheses

• (AP = ARIPO patent, EA = Eurasian patent, EP = European patent, OA = OAPI patent).

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Some Non-PCT Countries• Angola • Afghanistan• Argentina• Bangladesh• Bolivia• Burma• Cambodia• Chile• Djibouti• DO Dominican Republic• (joining 28 May 2007)• Ethiopia• Eritrea• Guyana• Iran• Laos• Oman• Pakistan• Paraguay• Peru• Saudi Arabia• Suriname• Somalia• Taiwan (wants to join)• Uruguay• Yemen• Venezuela

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PCT Costs

• If your client/company needs an estimate of costs, an estimate may be generated using the Global IP Estimator

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PCT Flow

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PCT Flow Redux

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PCT Flow Redux (bis)

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Priority under PCT

• Priority under the PCT is governed by the Paris Convention

• Same rights in that country if filed within 12 months of priority application

• http://www.uspto.gov/web/offices/pac/mpep/documents/appxp_4.htm#parart4

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File PCT – Receiving Office

• - the national Office of any Contracting State willing to assume this responsibility

• - the regional Office acting for one or more Contracting States, with their consent

- the International Bureau (IB)- For us = USPTO or IB- Determined by anyone of the applicants’

nationalities or residence (No US applicant/inventor, then can NOT file with USPTO as receiving office)

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Receiving Office Duties

• 1. Specifies the international authority competent to carry out search and examination

• 2. Checks:• - whether it is competent• - the filing papers and application• - whether fees are paid• - whether certain time limits are complied with• -- receives and directs correspondence from the

applicant to offices and authorities• -- collects fees and transfers some of them to the

ISA and the International Bureau (IB)

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Receiving Office • App must include:• 1.Indication that app

is international app• 2. Request of

designation of countries

• 3. Name of Applicant• 4. Description• 5. Claim

• App need not include:

1. Fees

2. Translation

3. Applicant’s signature

4. Title

5. Abstract

6. Drawings

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Receiving Office

• Failure to comply with formal requirements will result in request by receiving office to correct, e.g., informal drawings. Any reply must be filed with receiving office (USPTO – Mail Stop PCT or IB – in Geneva)

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Receiving Office

• Filed with wrong RO?• RO will forward to International Bureau• - meet priority deadline?• - timely paid fees?• wrong RO keeps transmittal fee• USPTO refunds the other fees• Must pay fees to IB within one month

(Rule 16bis)

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International Search Authority

• USA applicants can choose:

• USPTO $1,000* ($300 if prior US search)

• EPO $2,059

• Korea Patent Office $232

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Claims

• Added Subject Matter Problems

• Include multiple dependent claims

• Include a “means” claim

• term “means” is broadest protection in Europe

• Two part form not required

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Specification

• Consider removing US boilerplate to reduce excess page fees and translation costs

• Incorporate by reference priority document or co-pending US application with boilerplate if you believe you may nationalize the PCT application back into the US

• OK to incorporate by reference if you are doing so for the US ONLY. No effect for other countries

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Article 19 Amendments

• What? Claim Amendment(s) Only; No Argument or Comment

• When? Within 16 months from priority date or 2 months after mailing of International Search Report/ Written Opinion*

• How? File claim amendments with the International Bureau as substitute pages with statement describing the change to each claim

• Why? Publish with better claims for damages. Claims in better form for national stages.

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Demand

• Countries that still require demand (June 2006):

• Luxembourg, • Sweden, • Switzerland, • Uganda, • United Republic of Tanzania

• However, can enter each country through regional patent application (EPO) and ARIPO)

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Demand/Article 34 Amendments

• What? Your Chance to respond to the International Search Report/Written Opinion

• When? Later of three months from the date of the international search report and the written opinion or 22 months from the priority date

• How? File directly with International Preliminary Examining Authority (IPEA) – USPTO or EPO

• Why? Applicant’s chance to refute the rejection of the claims by the International Search Authority

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PCT also allows designation of of regional procedures

• European (EPC) Patenthttp://www.european-patent-office.org/

• Eurasian Patent http://www.piperpat.co.nz/europe/ea.html

• ARIPO Patent (African Regional Industrial Property Association)

http://www.aripo.wipo.net/

• OAPI Patent (Organisation Africaine de la Propriété Intellectuelle)

http://www.gpa.co.za/english/africa/oapi.htm

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PCT - national stage

• Ultimately, every PCT Application must proceed to "National Phase" prosecution in designated countries desired by procedures initiated by the end of 20 months (30 months in some countries)

• from filing date of priority application,• such as U.S. provisional or non-

provisional patent application.

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PCT - national stage

• National stage prosecution is necessary for perfection of patent rights in the respective designated state.

• Applicant must be careful in choosing countries for national stage.

• Highly variable in complexity and cost. s• Legal services and governmental fees and

translations can be costly.

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Modern treaties for international filing

Treaties signed by USA specifically related to patents: Patent Cooperation Treaty (PCT)

European Patent Convention (EPC)

Other treaties relating to regional rights TRIPs WIPO

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EPC - European Patent Convention

• The European patent system was established by the European Patent Convention (EPC)

• European Patent Office (EPO) administers EPC procedures

• Provides patent protection in 25 European countries on the basis of a single patent application and a single grant procedure. “All eggs in 1 basket.”

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EPC - European Patent Convention

• The European patent system established by European Patent Convention (EPC)

http://www.european-patent-office.org/http://www.european-patent-office.org/

epo_general.htm#organ

• The European Patent Office (EPO) administers the EPC procedureshttp://www.european-patent-office.org/epo/pubs/

brochure/general/e/epo_general.htm

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EPC - European Patent Convention

• European patent gives its holder the same rights in the designated contracting states as a national patent

• Valid for 20 years

• Effective only in those countries in which EP proceeds to grant (translation & fees)

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EPC - European Patent Convention

What are the rights granted?

• European patent is a legal title granting its holder exclusive right to make use of an invention for a limited area and time by stopping others from making, using or selling it without authorization

• analogous to exclusion principles in US law

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EPC - European Patent Convention

• Patentability requirements under the EPC not substantially different from US

• (1) Industrial Applicability • (2) Novelty (an invention considered new if

it does not form part of the state of the art), and

• (3) Inventive Step (not obvious to a skilled person having regard to the state of the art; like unobviousness in US)

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EPC - European Patent Convention

• European patent grant procedure takes on average just over four years for a patent to be granted.

• EPC patent grant procedure lays down time limits to facilitate communication between applicants and the Office.

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EPC - European Patent Convention

Signatory StatesMember states of the European Patent Convention: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Poland, Portugal, Rumania, Slovenia, Spain, Sweden, Switzerland, and the United Kingdom

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EPC - European Patent Convention

Extension States• Rights of a European Patent are likely

to be (but as of July 1, 2000 were not yet) extended into so-called extension states, which are Albania, Lithuania, Latvia, and former Yugoslav Republic of Macedonia

• Get the latest definitive listing at:http://www.european-patent-office.org/epo/members.htm

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EPC - method of initiating

How?• PCT application can be used to

designate EPC when filing PCT. Recommended to do so.

• EPC alternative is to file EPC as a regional filing based on pending US patent application under Paris Convention within 1 year from priority date.

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EPC - or national filings?

What are trade-offs?• High costs of EPC procedure including

translations and annuities.• EPC from filing to grant: 4 yr. average• Where only protection desired in limited

number of European states (e.g., Germany, UK, Netherlands), will be more cost-effective to file nationally. BUT: France and Italy have no national patent applications apart from EPC.

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EPC - patentability exceptions

BUSINESS METHODS & COMPUTER PROGRAMS NOT PATENTABLE

• EPC Article 52(2)(c): --schemes, rules and methods to perform mental acts, playing games or doing business, and programs for computers, are not regarded as inventions for which European Patents can be granted.

• Even so, application can be filed in EPO

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EPC - patentability exceptions

So, how are these exceptions handled? • EPO over last few years carries out

limited processing of appls. for business methods, pending clarification of law

• Applications for bus. meths. (& computer programs) are not searched

• Law may be changed or interpreted more favorably to applicants

• Many EPC applications in limbo, awaiting clarification of law

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EPC - patentability exceptions

Work-around for these exceptions? • If a business method uses a certain

hardware or system, industrial nature of hardware/system overrides “business method” use if hardware/system itself novel

• Example: Computerized hand-held device uses software but device itself is specially configured in novel way

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EPC - patentability exceptions

Still more . . . • Methods for treatment of the human

or animal body and• Diagnostic methods on humans or

animals • Expressly excluded by EPC Art. 52(4)

although Art. 52(1) enables protection to all inventions having industrial application (81 countries exclude)

Other EPC Considerations

Extra fee for:

• Every page of the application over 35– 14 Euros each

• Every claim over 15

– Claims 16-50 cost 225 Euros each

– Claims 51 and above cost 555 Euros each

– But aggressive multiple dependent claims and signal claims are allowed

• http://www.epo.org/applying/forms-fees/fees.html

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Other EPC Considerations

• No doctrine of equivalents

• No explicit duty of disclosure

• No incorporation by reference

• Claims are interpreted fairly literally

• Limitations on the timing of filing divisional applications

• Claim amendments must have literal support in the specification

• Software claim must include feature that is technical and innovative

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EP - advantage in UK

European patents with validity in Great Britain (as designated state) may be extended to a number of UK countries: Anguilla, Belize, Virgin Islands (British), Falkland Islands, Gibraltar, Cayman Islands, Jersey, St. Vincent, Turks and Caicos, Tuvalu, Bahrain, Bermuda, Botswana, Brunei, Fiji, Gambia, Ghana, Grenada, Yemen, Solomon Islands, St. Lucia, Singapore, Swaziland, Trinidad and Tobago, Vanuatu, Western Samoa, St. Christopher (St. Kitts) Nevis, Sierra Leone, Tanganyika, Tanzania, Zanzibar, Uganda, Cyprus (Nicosia), Guyana, Kiribati, and Seychelles

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Some international priority problems

• What happens if applicant loses original priority year? E.g., lack of money for foreign filing or lack appreciation of importance of invention at the time, may cause an applicant to miss the 12-month deadline.

• If the invention has been published, then this ordinarily creates a fatal bar to European and Japanese rights. ABSOLUTE NOVELTY?

• So is there any solution to this problem?

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Some international work-arounds?

• Failure to file under Paris Convention deadline is fatal only if a third party has filed a patent application in the interval, or if the invention has been published

• If only patent filing was in the United States, and the patent has not yet been issued or published (recall typ.18 mo. in USA), is it possible that there has so far been no publication of the invention anywhere in the world?

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Some international solutions

Where patent not yet issued, patent application not yet published, and no publication or commercial sale of invention anywhere in the world, could

• File national patent application in country of interest if permitted; OR

• File PCT application designating all countries and regions (ultimately selecting national phase only in those designated countries of interest)

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Challenges in foreign filing

Types:Opposition proceedings possible Proceeds in Patent Office of a country Depends upon patent laws of country EPC allows them also Inter partes (between parties)

proceeding Parties may present evidence and

expert testimony

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Challenges in foreign filing

Types:Nullity proceedings also possible Seek to nullify patent Typically held before special Patent

Court or other tribunal Inter partes proceeding Depend upon patent laws of country May occur at any time during patent

life

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Challenges in foreign filing

• Fees– Translations– Excessive claim fees

• Timing for Filing Divisional/Continuation Type Applications

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Further thoughts about PCT

Possible Benefits--• A PCT international application can put off

the major expenses of dealing with individual countries' patent offices for up to 30 months from original US filing date.

• May allow time for the international business to develop or

• May allow time for licensing or mfg. conditions to improve

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Potential Benefits of EPC

• EPC “all eggs in one basket” approach makes economic and logical sense if enough EU countries of interest (or where EP desired in France or Italy)

• EP can open protection to all of Europe, and even the extension states mentioned

• EP in UK opens other UK counties

Unified Patent

• 25 of 28 EU countries (all except Spain, Italy, and Croatia)

• Patent rights at a lower cost

• Not yet in effect; will start functioning when ratified by certain EU member countries

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Unified Patent Court

• The Unified Patent Court (UPC) will (ultimately) enable enforcement of a unitary patent throughout the EU countries

• http://www.unified-patent-court.org/

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National patent applications not using PCT or EPC

Possible Benefits--• Paris Convention filing of national patent

appls. in selected countries could be preferable or economical

• Examples: Canada, Japan, Germany, UK, Korea, Australia

• National filing especially where time is pressing & countries of interest are few

• Only way into “Non-PCT countries”

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Some thoughts about selecting countries for foreign filing whether

or not using PCT or EPCImportant Questions--

• Country includes a market for technology of invention?

• Is there a manufacturing base to produce or export from country?

• Are patents effective in country?

• Can profits/license fees flow out?

• Is inventive subject matter barred?

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Some other country thoughts

Weigh Against Possible Benefits--

• Paris Convention national patent application or PCT filing in Germany and Japan also gives the advantage that examination of patent application may be deferred for years

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A key treaty organization: WIPO

• WIPO - World International Property Organization (“WYE-Poe" or "WEE-Poe")

• WIPO administers 23 treaties

and jointly administers PCT & EPC

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More about WIPO "The International Bureau"

Principal international authority http://www.wipo.org/

administers handling of international patent applications under PCT - the Patent Cooperation Treaty - for 179 member states

provides int’l clearing house, in effect handles these through the

INTERNATIONAL BUREAU of WIPOhttp://www.wipo.org/about-wipo/en/members/

index.html

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Is there an international patent?

• There are only international patent applications. They open the way to patents in individual countries, although a European patent under EPC comes close to being an "international patent."

• So no, there is no “international patent.” BUT--

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Is there an “international patent application?”

• For convenience, we use the term "international patent application" to mean either a PCT application or else an EPC application.

• An international application typically uses the same specification and drawings and format of the U.S. application but claims appropriate to European and international procedures.

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And so, when preparing U.S. patent application

Recommendations: • Plan for possibility of foreign filing• Discuss that with patent counsel• Budget for at least a PCT application• Prepare application in international format

so specification and drawings are acceptable for USPTO, for either PCT or EPC filing

• Claims in “US” or “European” format

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International procedures in a nutshell

Why not seek corresponding patents in every country--or most countries?

• Foreign patents are complicated• Relatively expensive to file & prosecute• Very expensive to maintain for life of a

patent (annuities: sliding scale upward) • Translations will be required (Japan, China

and Korea are expensive)

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International procedures - how big a nut to crack?

• Like asking the question: "How deep a hole do you wish to dig?"

• You do not have enough money for patents in all the world’s countries.

• A business interested in patents in other countries must choose carefully; must consider what, where and why.

• Contrast with successful pharmaceutical drug

Patent Prosecution Highway

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Patent Prosecution Highway

• If at least one claim of an application has been found to be allowable by a 1st patent office, an accelerated examination can be requested at a 2nd patent office by submitting a request for PPH;

• The claims filed in the 2nd patent office must sufficiently correspond to the claims allowed in the 1st patent office.

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First

Second

Allowance

Accelerated Exam

Request PPHpriority

Patent Prosecution Highway

• Examination under the PPH does not result in automatic issuance

• If the requirements of the PPH are satisfied, application will be advanced out of turn for Examination purposes

• Examination still takes place before both patent offices

• Applicant must still comply with all the requirements of each jurisdiction (e.g. criteria for patentability, formalities, duty of disclosure, etc.)

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Patent Prosecution Highway

General Requirements:• Applicant submits request for PPH;• Applicant submits supporting documents:

– Copy of allowed claims– Copy of documents indicating allowable claims– Completed claim correspondence table showing the

relationship between the claims allowed by 1st Office and the claims pending in the USPTO

– Copies of examination reports from the 1st Office • Applicant must pay fee• Supporting documents required by the USPTO may vary

depending on which Patent Office is involved with the PPH.

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Program

Completed

Class materials - Copyright 2002-14 Randy L. Canis, Peter Gilster,

and Tim Clise