Navigation Menu

Other Services

Skip to Navigation menu Skip to top of page

WEEKLY NEWS - SEPTEMBER 06, 2007

This article is FREE access as part of MIP Week, a weekly email newsletter written by the editors of Managing IP magazine. Take a one week trial to Managing IP and find many more related articles.

UK and US launch patent prosecution highway

Emma Barraclough, London

IP owners who want patent protection in the UK and the US should get their applications dealt with more quickly after the launch of a patent prosecution highway between the two countries this week

On Tuesday the USPTO and the UK Intellectual Property Office (UKIPO) began a 12-month pilot scheme that will allow patent applicants who have received an examination report by either the UKIPO or the USPTO to request accelerated examination of a corresponding patent application filed in the other country.

“The Patent Prosecution Highway agreement between the UKIPO and the USPTO will enhance the operational efficiency of both agencies and improve patent quality,” said Lord Triesman, the UK government minister in charge of IP.

"Patent offices worldwide must increase the depth and effectiveness of their cooperation,” said USPTO director Jon Dudas. “Our collective goal is to reduce duplication of work, speed up processing, and improve quality.”

The pilot programme between the UK and the US is the latest in a series of highway initiatives being launched by IP offices around the world as they look for ways to make more use of work done by examiners in other patent offices and to cut their mounting backlogs of applications.

The Japanese Patent Office has been particularly enthusiastic about the use of patent prosecution highways. In January the US secretary of commerce, Carlos Gutierrez, and Japanese trade minister Akira Amari officially launched a patent prosecution highway between the two countries following a successful pilot project that began in May 2006. At the time, Japanese officials revealed that negotiations had begun to include Australia, Canada, the UK and Germany in a network of similar highways.

Negotiations with the UK led to a pilot programme between the JPO and the UKIPO being agreed in March. The scheme began in July. The aim is that patent applications originating from the UK will be examined by the JPO about two years earlier than usual.

So far, the European Patent Office (EPO) has appeared reluctant to launch similar programmes with other IP offices. But that looks set to change. Speaking to Managing IP before taking over the presidency of the EPO, Alison Brimelow said that IP offices must reduce duplication if they want to be more efficient.

One way to do that, she said, is for the EPO to work more closely with its counterparts in the US and Japan. The EPO, JPO and USPTO comprise the Trilateral Offices.

“We've been rather careful about the patent prosecution highway coming out of the Trilateral. Not least because we produce our searches faster than the others so I think the Office thought this was a one-way street going the wrong way. But this is one of the occasions where I think saying ‘no’ was not terribly helpful and we have to try and reengage with the Trilateral now.”