Smith Hopen IP Weblog

China Joins PPH

WASHINGTON – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu, announced the start of the Paris Route and PCT Patent Prosecution Highway (PPH) pilot programs beginning on December 1, 2011. 

PPH will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country.  Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

Full Press Release.

Electronic Terminal Disclaimer

The United States Patent and Trademark Office announced the beta release of eTerminal Disclaimer in EFS-Web which permits the automatic filing and grant of a terminal disclaimer in a patent application. The new eTerminal Disclaimer provides applicants with many advantages and promotes greater efficiency in the patent examination process. This web-based eTerminal Disclaimer can be filled out completely online through web-screens and no EFS-Web fillable forms are required. eTerminal Disclaimers are auto-processed and approved immediately upon submission if the request meets all of the requirements.

Fees must be paid immediately which will then provide users more financial flexibility. A paper filed Terminal Disclaimer requires a fee but does not guarantee a Terminal Disclaimer approval. Each eTerminal Disclaimer filed requires a single terminal disclaimer fee, but can include up to 50 “reference applications” and 50 "prior patents".

During the beta period, eTerminal Disclaimers cannot be filed to a patent application that has yet to be docketed to an examiner. Applicants can check the Transaction History Tab of Public or Private PAIR to determine if their application has been docketed to an examiner. To file a terminal disclaimer to an undocketed application, please complete form SB/25 or SB/26 and submit the forms for manual review.

The Quick Start Guide for eTerminal Disclaimer is available at:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp

For assistance with filing an eTerminal Disclaimer, or to suggest improvements, please call the Patent Electronic Business Center at (866) 217-9197 (toll free) or send an email to EBC@uspto.gov