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WEEKLY NEWS - JANUARY 08, 2008

This article is 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.

Japan and US map out New Route for patents

Peter Ollier, Hong Kong

The JPO and USPTO will launch a pilot work-sharing project known as the New Route on January 28

The proposed system will deal with patent applications filed under the Paris route. A filing in one office that is a member of the New Route programme would be deemed a filing in all member offices.

The first office and applicant would then have 30 months in which to make available a first office action and any necessary translations to the other member offices. The first office would also have to ensure publication of the application after 18 months.

Although the scheme is similar to the PCT in allowing simultaneous filing and a 30 month processing time, both the USPTO and JPO claim that the New Route may have lower costs for users and allow for more targeted filings in other countries.

They also say that allowing the office(s) of second filing to use the search and examination results of the first office would also reduce duplication of work and lower patent pendency.

Because the New Route would require changes to the patent regimes in both countries, the pilot project is based on scenarios available using the existing filing system.

More information on the pilot project in which the USPTO is office of first filing is available here, and with the JPO as first office is available here.

The pilot will end after a year or when 50 applications have been considered.

On January 4 the patent prosecution highway (PPH) between the JPO and USPTO became permanent. A PPH between two offices allows patent applicants who have received an examination report from one office to request accelerated examination of a corresponding patent application filed in the office of the other country.

The JPO also has pilot PPHs with KIPO and UKIPO and is due to start one with the German Patent and Trade Mark Office in March 2008.

More information on the New Route Pilot Project is available on the JPO and USPTO websites. The USPTO will post further information on the project on January 14.



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