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Patent Prosecution Highway
- 6/30/2011

The U.S. Patent Office continues to offer the "Patent Prosecution Highway" for a U.S. patent applicant who receives a favorable ruling in a foreign patent office for claims that correspond to a related U.S. patent application. If a certain foreign patent office deems that a claim is patentable, the U.S. Patent Office will expedite the examination process and the related U.S. patent application will be examined out of turn. The program offers applicants an expedited path through the backlog of the U.S. Patent Office, provided specific conditions are met. Some of the pertinent conditions are provided below.

In order to participate, a petition must be prepared and filed with the U.S. Patent Office. The petition must contain a copy of the favorable action from the foreign patent office.

The Patent Prosecution Highway is only applicable for certain foreign patent offices. Currently, those offices include Australia, Austria, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Mexico Russia, Singapore, Spain, Sweden and the United Kingdom.

The foreign patent application must be filed prior to the U.S. application, and the U.S. application must claim priority to the foreign application (not the other way around). The foreign application may be a national filing, for example, the first application was filed in Japan, and the U.S. application claims priority to the Japan application. In some patent offices, the foreign application may be a PCT patent application.

The claims of the related U.S. application must substantially correspond to the allowable claims of the counterpart application. This correspondence should be explained in the petition. In addition, documentation related to prosecution of the foreign counterpart application, including office actions and references cited therein, along with English language translations thereof must be submitted with the petition.

If these conditions are met and the U.S. Patent Office grants the petition, the Patent Office will examine the application within approximately three months. For clients seeking to fast track their applications and who meet these conditions, the Patent Prosecution Highway may be a useful and cost effective procedure.

Contact Ostrolenk Faber for more information on the Patent Prosecution Highway, or if you have questions relating to specific matter.