Eight Offices have agreed to relax the PPH requirements, now limited to OFF (Office of First Filing) positive work product, to OEE (Office of Earlier Examination) positive work product, under the new MOTTAINAI PPH pilot. This is a dramatic change since it will greatly expand the availability of PPH expedited examination in all participating countries. The USPTO noticed its agreement to MOTTAINAI PPH 7/1/2011. See http://www.uspto.gov/news/pr/2011/11-43.jsp. The USPTO will commence its MOTTAINAI PPH pilot 7/15/2011. The PPH portal description is at http://www.jpo.go.jp/ppph-portal/mottainai.htm.
The USPTO Notice also states “a new definition of claim correspondence, which will make the system more flexible and user-friendly”. This cryptic statement is presumably referring to the USPTO’s interpretation of its prior non PCT-PPH agreements under which the USPTO precludes presentation of additional dependent claim limitations after an application is accorded PPH status. (The USPTO’s interpretation of all of its PCT-PPH agreements does not include that limitation.) The eight participating offices are: USPTO (US); CIPO (CA); JPO (JP); IPAustralia (AU); NBPR (FI); Rospatent (RU); SPTO (ES); and UKIPO (UK). The Notice and also the PPH portal description do not clarify certain timing issues. However, it is likely that, as with other PPH protocols, a request for PPH status in any application will only be effective prior to commencement of examination in that application. Advice: Applicants should carefully monitor examination in each patent family and determine when PPH status becomes available. For patent application families now pending, applicants should identify patent families in which positive work product exists, and then determine if that work product forms that basis for PPH in any other applications in the family.
Rick Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
Home Page: http://www.Neifeld.com/
