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Agreement between the European Patent Office and the United States Patent and Trademark Office for Expedited Examination of Patent Applications may expire on September 30, 2010(07/22/10)
The United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) have maintained a fast track examination program since September 29, 2008. Under this program, called the “patent prosecution highway,” a patent applicant may ask one of the offices to expedite examination of an application if the other office has ruled that at least one claim in a corresponding application filed in that other office is patentable. Thus, if the EPO indicates that at least one claim in an application is patentable, the applicant may ask the USPTO to expedite examination of the corresponding claims in the applicant’s corresponding U.S. patent application. Likewise, the EPO will expedite examination on request of corresponding claims of a European application if the USPTO decides that at least one claim in a corresponding U.S. patent application is patentable. “Expediting examination” puts the application on a patent examiner’s docket that has much shorter deadlines.
The purpose of this patent prosecution highway program is to increase efficiency and reduce the workload of the EPO and the USPTO by sharing the results of the first examination of the claims. This is sometimes called “work sharing.” Proponents argue that sharing the results of examination will tend to spare each patent office involved from having to conduct an original search and examination of applications originating abroad. In the case of the USPTO, this could help reduce the backlog of unexamined applications because nearly half of all applications are filed by foreigners. The patent prosecution highway program between the EPO and the USPTO is currently on a trial basis and is set to expire on September 30, 2010. The program has been extended once since its inception. Owners of patent applications cannot assume that the EPO-USPTO patent prosecution highway program will be extended again. For qualifying applications owners should consider taking advantage of the program before its current expiration date.
In addition to the program with the EPO, the USPTO currently has patent prosecution highway programs with Australia, Canada, Denmark, Finland, Germany, Hungary, Japan, the Republic of Korea (South Korea), Singapore, and the United Kingdom. The programs with Japan and South Korea are fully implemented and are now permanent. The programs with the other countries are on a trial basis.
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