Intellectual Property Alert: Notes from the USPTO and Patent Public Advisory Committee Quarterly Meeting Part 6 of 8: International Update

The United States Patent and Trademark Office (the Office) and the Patent Public Advisory Committee (PPAC) recently held their Patent Public Advisory Committee Quarterly Meeting to review policies, goals, performance, budget, and user fees. Topics addressed included 1) Update on Patents business units; 2) Finance/Budget; 3) IT update; 4) Artificial Intelligence; 5) International update; 6) Pendency and Quality; and 7) PTAB update.

This is the sixth of eight alerts Vorys will be publishing to summarize topics discussed at the Quarterly Meeting. This note summarizes international updates provided by the Office of Policy and International Affairs (OPIA) and the Office of International Patent Cooperation (OIPC).

In her introductory remarks, PPAC International Subcommittee Co-Chair, Tracy Durkin, acknowledged the various collaboration agreements implemented between the Office and many IP offices around the world. The Office is particularly proud of its close collaboration with the Mexican Institute of Industrial Property (IMPI) and believes that the agreement signed last January between the U.S. and Mexico stands as a model for bilateral cooperation. The Office stands ready to extend its collaboration with other countries around the world interested in enhancing intellectual property rights.

Regarding the Parallel Patent Grant (PPG) program, Chief Policy Officer and Director for International Affairs, Shira Perlmutter, presented the new work sharing program developed with the IMPI, which is meant to accelerate the process of obtaining a patent in Mexico for applicants already in possession of a corresponding U.S. patent. The PPG framework allows IMPI to leverage the Office search and examination results when granting a counterpart Mexican patent. Thus, the PPG will benefit U.S. innovators by facilitating accelerated patent protection in Mexico. While the actual pendency timeline is about 5 to 6 years from the start of the examination process, the PPG program advantageously enables applicants to obtain a patent within just few months.

The PPG program differs from the Patent Prosecution Highway (PPH) and/or the Patent Validation Agreement (PVA) in several ways:

• PPG is a one-way reliance on U.S. examination work product. Only the USPTO work product is the base of the PPG, not the work product of the partner office. PPG is applicable to all technologies.
• To trigger the PPG, the Office has to have granted the U.S. patent application, and the applicant request must be submitted at the IMPI.
• Under the PPG, the partner office takes the Office’s work product from the counterpart issued patent, but the patent application must still conform to the national law in terms of subject matter eligibility. Therefore, the partner office will still undertake a review to ensure conformity to local patent laws.

Deputy Commissioner for International Patent Cooperation, Valencia Martin Wallace, stated that the Office is taking a holistic approach with regard to the OIPC strategic plan in an effort to expand its programs into partnership with other IP offices. Through past, present, and future assessments, the Office will define which of the programs (PPH, PPG, or PVA) will be best suited with those partnerships.

The Office, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the China National Intellectual Property Administration (CNIPA) together handle about 85% of the world’s patent applications. With the recording success of the World Intellectual Property Organization (WIPO) Task Force, the Office is encouraging EPO, JPO, CNIPA, and KIPO to join forces in order to have the benefit of priority document exchange.

Further, the OPIA and the OIPC are both working diligently with WIPO on developing a common database for bibliographic data, in order to make searching and examination easier and consistent, regardless of the office in which the applicant files.