October 1, 2012

Israeli and US Patent Offices Extend and Expand Mutual PPH Pilot Progam: Now Applies also to PCT Applications Examined by Both Offices

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The Patent Prosecution Highway (PPH) program between the Israeli Patent Office (“ILPO”) and the US Patent and Trademark Office (“USPTO”) has been extended and expanded as of 1 August 2012 to apply also to PCT applications examined by both Offices, in their capacity as International Search and Examination Authorities.

On 1 July 2011 the ILPO and USPTO entered into an agreement for a pilot PPH program, whereby reliance on positive examination results of a patent application by one of the two Offices may form the basis for granting special status to a counterpart application in the other office1.

he PPH program initially pertained only to the examination of national patent applications. Most recently, as of 1 June 2012, the ILPO started operating as an International Searching Authority (“ISA”) and a Preliminary Examination Authority (“IPEA”), setting the stage for further PPH cooperation possibilities. Indeed, as of 1 August 2012, the PPH pilot program has been extended in time and expanded in scope to include also PCT applications that undergo search and examination by either one of the two Offices, in their capacity as ISAs or IPEAs. In other words, a positive Written Opinion (i.e. acknowledgement of patentability of at least one claim) in a PCT application following examination conducted by the ILPO may form the basis for proceeding under the PPH program at the USPTO; and, of course vice versa2.

The extension and expansion of the ILPO-USPTO PPH program and the PPH pilot program between the ILPO and the Japanese Patent Office are, among others, an important acknowledgement of the quality of examination conducted by the ILPO.

It should be noted that the PCT-PPH program is still considered a pilot program between the two Offices, and unless extended will end on 31 July 2013.

The commercial importance of a US patent and the fact that under regular prosecution US patent applications come up for examination only after several years from filing, renders a strong rationale to resort to the PPH route in the USA for the purpose of accelerating examination. There is, thus, a strong case in favor of ensuring early examination by the ILPO either through filing a first (priority-establishing) application in Israel and requesting immediate examination (under the special accelerated examination proceedings provided by the ILPO for such applications3) or through choosing the ILPO as the ISA and IPEA for PCT applications4.

1 See our July 2011 newsletter entitled Israel – USA: Patent Prosecution Highway; New Opportunities for Applicants of Israeli and US Patent Applications.
2 Note that in order to take advantage of the PPH program, at least one claim in the application should be substantially the same as a claim considered to be patentable in the Office that conducted the examination.
3 See the aforementioned July 2011 newsletter.
At this stage such choice is available only to Israeli applicants. At a later stage this option will be open to all.