News & Events

Recent developments regarding the Patent Prosecution Highway (PPH) have made it easier to receive faster allowances of certain U.S. patent applications.  Not all applications are eligible, but for those that are, patent practitioners are reporting allowances as fast as 2-15 days after filing a petition with the U.S. Patent and Trademark Office (USPTO) to make the application special using the PPH.

The purpose of the PPH is to minimize duplicative searching and prosecution efforts through workload sharing among partnering patent offices regarding applications with common claims. This often results in the expedited allowance of PPH applications and a reduction in prosecution costs. The PPH allows an applicant who has received notification of allowable claims from a first patent office to request fast-track examination of a corresponding application in a second patent office based upon the search and prosecution results of the first patent office. The first patent office is called the Office of First Filing (OFF) and the second patent office is called the Office of Second Filing (OSF). As of this writing, the patent offices partnering with the U.S. are Australia, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Singapore, and the United Kingdom. According to the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent), Rospatent will join the PPH on September 1, 2010.

It is important to note that entrance of an application into the PPH is not a guarantee of allowance. Each PPH application is subject to analysis by an examiner under the patent law of the OSF, and an examiner is not obligated to rely only upon the search results and conclusions of the OFF. Furthermore, an applicant is still required to adhere to disclosure obligations as appropriate to the patent law of the OSF.

The PCT-PPH

Use of the PPH prior to the introduction of the PCT-PPH, described below, was not an attractive option for many applicants who wanted to file in several countries because one had to use the route of filing Paris Convention applications, rather than a PCT application, in order to use the PPH. The introduction of the PCT-PPH provides an easier route for applicants to pursue quick allowances in certain circumstances.

In a pilot program, the PPH has recently expanded such that an applicant receiving a favorable report on patentability regarding a PCT application having the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), or the Korean Intellectual Patent Office (KIPO) as the International Searching Authority (ISA) may request fast-tracking of a U.S., European, Japanese, and/or Korean patent application related to that PCT when that application has entered the national phase. This is referred to generally as the PCT-PPH. The recent inclusion of Korea is significant because choosing the KIPO as the ISA for PCT applications is fairly common due to its relative affordability compared to the USPTO, the EPO, and the JPO, and because of the searching competency of the KIPO.   Upon receiving favorable treatment of at least one claim in, e.g., a PCT Written Opinion (ISA/USPTO, EPO, JPO, or KIPO), one may request fast-track examination of a U.S., European, Japanese, and/or Korean application related to that PCT.

“Favorable treatment” refers to issuance of a “favorable international work product” with respect to at least one claim. That is:

1. a Written Opinion from an ISA (WO/ISA), where the ISA must be the USPTO, EPO, JPO, or KIPO;
2. a Written Opinion from an International Preliminary Examining Authority (WO/IPEA) (IPEA must be the USPTO, EPO, JPO, or KIPO); or
3. an International Preliminary Examination Report (IPER) from an IPEA (IPEA must be the USPTO, EPO, JPO, or KIPO);

must issue indicating at least one claim in the PCT application has novelty, inventive step, and industrial applicability.

When requesting fast-track examination of a U.S. application using the PCT-PPH, several requirements must be met. Details regarding these requirements are set forth at http://www.uspto.gov/patents/init_events/pph/index.jsp for each partnering country. One of the most important requirements is that substantive prosecution of the U.S. application has not begun. Also, all claims of the U.S. application must correspond, or must be amended to correspond, to the favorably treated claims. An applicant must also file a petition to make the U.S. application special, also called a “request” (this is not the same as the USPTO Accelerated Examination program). This “special” status imparts certain benefits: not only is the application advanced out of turn for examination, but applications will continue to be treated as special throughout the entire prosecution before the USPTO, including any appeals. A request need not be filed at the same time that the U.S. application is filed, and there is no USPTO fee associated with the request.

To fast-track European, Japanese, or Korean applications before the EPO, JPO, or KIPO using the PCT-PPH, one must consult the PCT-PPH rules of the EPO, JPO, and KIPO, as appropriate.

Who Should Use the PCT-PPH?

Clients having, or considering filing, a PCT application designating the USPTO, EPO, JPO, or the KIPO as the ISA who wish for expedited allowance of a related U.S. application that has not yet undergone substantive prosecution should consider utilizing the PCT-PPH. Even if a related U.S. application has begun substantive prosecution, one may file a U.S. continuation, divisional, or continuation-in-part application and request entry of that application into the PPH. Patent practitioners have reported Notices of Allowance issued from the USPTO within 2-15 days from the date of a PCT-PPH (ISA/Korea) request.

A link to a more detailed paper regarding the PPH and the PCT-PPH can be found here. If you have questions about the PCT-PPH or the PPH in general, please contact Tamara Kale or your COJK attorney.

Today the U.S. Supreme Court released its long-awaited decision in Bilski v. Kappos, a case that was expected to have wide-reaching impact in deciding the bounds of patentable subject matter, especially with regard to patents relating to business methods and software. The Court affirmed that business methods and software are eligible for patent protection unless they are written to cover “laws of nature, physical phenomena, and abstract ideas.” The Court held that the ‘machine-or-transformation’ test used by the Court of Appeals for the Federal Circuit is not the only test for determining patent eligibility. The decision appears to preserve the status quo and leaves the door open for patents directed to software and business methods.

The claims of the Bilski patent application are directed to a business method relating to hedging risk in the energy market. Previously, the Federal Circuit held that the claims of the Bilski application were not eligible for patent protection, stating that a claim to a process must either (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. The Federal Circuit held that this “machine-or-transformation test” was the sole test for determining patent eligibility of a process.

In an opinion written by Justice Kennedy, the Supreme Court agreed, as expected, that the claims of the Bilski application are not patent-eligible subject matter. In interpreting Section 101 of the U.S. patent laws, the Court held that “the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but that the test is “not the sole test for deciding whether an invention is a patent-eligible ‘process.’” The Court also held that “Section 101 similarly precludes the broad contention that the term ‘process’ categorically excludes business methods.”

While the Supreme Court left open the door to patent eligibility, it did little to clarify how to pass through that door. Today’s opinion referred to legal principles given by the Court in its previous decisions in Benson, Flook, and Diehr. Claims to software or business methods that do not pass the machine-or-transformation test may nevertheless be eligible for patent protection if an argument for patent eligibility can be made under those principles. Nevertheless, it remains unclear exactly where the line is drawn.

In sum, it appears that the Supreme Court passed on the opportunity to make any large change in the patentability of software or business methods. For software companies and other entities involved with patents in this area, this opinion appears to preserve the status quo.

If you have any questions or concerns about how the Bilski decision impacts you, please do not hesitate to contact your COJK attorney.

READ THE COMPLETE OPINION

On Thursday, September 24, 2009, the World Intellectual Property Organization (WIPO) announced that Thailand had completed the necessary documentation to become a contracting state of the Patent Cooperation Treaty (PCT). The effective date for Thailand’s entry is December 24, 2009 (country code: TH). As of this date, any PCT application that is filed will automatically designate Thailand for international preliminary examination, along with the other 141 contracting states of the PCT. Nationals and residents of Thailand will also be able to file PCT applications as of this date.

According to its Department of Intellectual Property website, Thailand has considered entry into the PCT since at least 2007. Thailand’s entry follows that of Chile (June 2, 2009) and Peru (June 6, 2009). Commercial interest in Thailand has increased in recent years due, in part, to its allure as a travel destination such that tourism is one of its top industries along with textiles, garments, manufacturing (e.g., computers and other electronics), automobiles, and automotive parts. Thailand, whose population ranks 21st in the world at approximately 65 million, is a prominent exporter of goods and is the number one exporter of rice worldwide.

An applicant of a contracting state (e.g., Thailand, the U.S., Canada, Mexico, China, Japan, Germany, Italy) who develops an invention with international marketability may wish to consider filing a PCT application. A PCT application is a cost-effective, streamlined method that allows an applicant to seek patent protection in one or more contracting states without having to initially file individually in each country.

For more information on this issue please contact:

Tamara Kale
206-682-8100
tamara.kale@cojk.com

Due to the rapid pace of evolving technology, many patents will have lost their commercial value near the end of their full term. However for patents that are actively generating royalties, blockbuster drugs or other core technology patents, each day of lost patent term is a potential day of lost profits.  While the procedures for maximizing patent term under the existing Patent Office rules are well understood, the Wyeth v. Dudas that is currently on appeal may allow patent owners the opportunity to gain significant additional patent term if steps are timely taken.

The number of days of patent term adjustment to be awarded are set forth in parts A and B of 35 U.S.C. § 154(b).  Under part A, a patent gets one day of patent term adjustment (PTA) for each day the Patent Office does not provide an Office Action or Notice of Allowance beginning 14 months from the day on which the application was filed.  Additional days of PTA are added for each day after four months where the PTO does not reply to a response submitted by the applicant, a decision from the Appeals Board or a decision from a Federal Court.  Additional days of PTA are also awarded for each day that the Patent Office does not issue a patent within four months of the issue fee being paid.

Under part B, one day of PTA is added for each day the Patent Office does not issue a patent beginning on the third anniversary of its filing.  Not included in the days of PTA awarded are any time consumed by requests for continued examination or any time where the applicant was deemed to have “failed to engage in reasonable efforts to conclude prosecution of the application.”[1] The PTO rules set forth a multitude of actions for which the applicant will lose days of PTA.

The time period for a patent owner to contest the number of days of PTA awarded are strict.  If an applicant does not agree with the days of PTA calculated by the Office, the applicant must submit an application for patent term adjustment no later than payment of the issue fee.[2] If the Patent Office does not revise the patent term, any requests for reconsideration of the patent term adjustment must be filed within two months of the issue date.[3] Any further remedies for the correction of the number of days of PTA awarded must be obtained in a civil action against the Director filed in the District Court for the District of Columbia within 180 days of patent grant.  35 U.S.C. § 154(b)(4).

The Wyeth v. Dudas Case

In September of 2008, the District Court for the District of Columbia decided a case brought by Wyeth and Elan Pharma International Ltd. against John Dudas in his capacity as Director for the U.S. Patent and Trademark Office.  At issue is the office’s interpretation of 35 U.S.C. § 154(b)(2)(A) that concerns how the days of overlap in the A and B periods are to be handled.  In a nutshell, the PTO was interpreting the statute to give applicants credit for the A delay or the B delay, whichever was larger, but never the sum of the A and B delays.  In contrast, it was Wyeth’s position that the proper period as defined in the patent statute is the sum of the A and B periods less any period of overlap.

PTO’s position is that PTA = longer of Part A or Part B.

Wyeth’s position is that PTA = Part A + Part B – Overlap.

The District Court agreed with Wyeth’s interpretation of how the days of PTA should be calculated..  On November 11, 2008, The Patent Office appealed the Wyeth v. Dudas case to the Court of Appeals for the District of Columbia.

What To Do Until the Wyeth Case is Decided

If the Patent Office wins the Wyeth case, then patent terms will be calculated as before.  If Wyeth wins the case, then the Patent office will have to grant patents issuing after the appeal the sum of the part A and B periods less any overlap.

There is no guarantee that the Patent Office will retroactively grant additional days of patent term for other patents that are eligible.  Because the time periods for contesting the number of days of PTA awarded are so strict, owner of patents that are issuing now from applications that were pending for more than 3 years may consider requesting that the PTO grant the number of days of PTA according to the formula approved in the Wyeth case before the issue fee is paid or within 2 months of issue.  If the PTO does not respond or denies the request, patent owners should consider filing suit against the office within 180 days of issue in order to ensure that any such request will not be time barred.

While not every patent would justify the expense to make sure that the maximum number of days of PTA are granted, patents owners may have one more “corporate jewels” for which such efforts are warranted.

[1] 35 U.S.C. § 154(b)(2)(C)(i).

[2] 37 C.F.R. § 1.705(a).

[3] 37 C.F.R. § 1.705(d).

6 7 Wyeth v. Dudas, 580 F. Supp. 2d 138, 88 USPQ’2d 1538 (D.D.C., September 30, 2008)