The USPTO has now announced the new requirements for claim correspondence and timing issues for PPH status under the MOTTAINAI agreement, inferred from the USPTO’s 7/1/2011 announcent at: http://www.uspto.gov/news/pr/2011/11-43.jsp. I quote below these USPTO requirements from the agreement with CIPO. However, the USPTO requirements appear to be identical for all participating Offices:
All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in the CIPO. Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims in the USPTO are of the same or similar scope as the claims in the CIPO, or the claims in the USPTO are narrower in scope than the claims in the CIPO. In this regard, a claim that is narrower in scope occurs when a CIPO claim is amended to be further limited by an additional feature that is supported in the specification (description and/or claims). A claim in the USPTO which introduces a new/different category of claims to those claims indicated as allowable in the CIPO is not considered to sufficiently correspond. For example, if the CIPO claims only contain claims to a process of manufacturing a product, then the claims in the USPTO are not considered to sufficiently correspond if the USPTO claims introduce product claims that are dependent on the corresponding process claims.
The additional limitation that makes the claims in the U.S. application narrower in scope than the allowable/patentable claims in the CIPO application must have support in the written description of the U.S. application and the additional limitation must be presented in dependent form. The applicant is required to submit a claims correspondence table in English. The claims correspondence table must indicate how all the claims in the U.S. application correspond to the allowable/patentable claims in the CIPO application(s). The dependent claims with the additional limitations must be clearly identified in the claims correspondence table.
Examination of the U.S. application for which participation in the PPH program is requested has not begun.
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/
