Tips and Tricks: Filing a PPH Request in the United States

The Patent Prosecution Highway (PPH) program can be an excellent way to more quickly move a patent to issue. Via PPH, participating patent offices may expedite examination of applications which have at least one claim allowed in another PPH patent office. A listing of participating PPH offices may be found here.

U.S. patent applications eligible for PPH must meet the following requirements:

  1. At least one claim in a corresponding application must be allowed at an eligible* Office of Earlier Examination (OEE)
  2. The U.S. application must have the same earliest priority date as the OEE application
  3. Substantive examination of the U.S. application must not have started

Should your U.S. patent application meets the PPH requirements, a PPH request form may be submitted. There are several pieces of information that are required by the U.S. Patent Office to complete a PPH request. Below are a few tips and tricks to help make the process of filing a U.S. PPH request go smoothly:

1. Notify your legal counsel early

  • A U.S. PPH request must be filed after at least one claim has been allowed in an OEE and before substantive examination of the U.S. application has started
  • Once at least one claim has been allowed in an OEE, discuss with your legal counsel if you wish to apply for PPH status as soon as possible
     

2. Provide the most recent Office of Earlier Examination (OEE) work product which shows allowed claim(s)

  • If the OEE work product is not in English, you will also need to provide a translated copy of the OEE work product which shows that the claims are allowed
  • If the OEE work product needs to be translated to English, machine or manual translations are accepted (translations do not have to be verified)
  • Examples of OEE work products may include International Search Reports, Decisions to grant a patent, and Extended European Search Reports

 

3. Provide a full listing of the OEE claims in English to your legal counsel

  • A U.S. PPH request requires that the OEE claims correspond with U.S. claims
  • An English listing of the allowed OEE claims will help your legal counsel to properly fill out a claim correspondence table in the PPH request form

 *eligible OEEs are PPH participating offices

Autonomous Vehicles: Patenting Outside-the-box

Autonomous vehicle technology has the potential to profoundly alter transportation as we know it.  Aside from a fundamental sea change in the public’s perception of transportation in general, autonomous vehicle technology has the potential to alter the makeup of roadways by enabling an easing of traffic congestion due to vehicles being able to travel more efficiently and closer together, to promote safer car travel, and to potentially reduce carbon emissions if combined, for example, with electric technology.

In an industry with so much potential, there are of course innumerable opportunities for development of intellectual property portfolios related to autonomous vehicles.  The focus of today’s post is to emphasize that in such an industry with so much potential, it is important to think outside the box in search of new ideas and strategies.  As an example, consider a recent patent (US 9340178 B1) granted to Google, which aims to reduce “secondary impact” in a situation where a pedestrian were to be struck by an autonomous vehicle.  Secondary impact refers to the impact of a pedestrian hitting either a roof of the car, a street surface, etc., subsequent to the vehicle striking the pedestrian (initial impact).  Secondary impact often is what results in serious injuries, as compared to initial impact.

The Google patent aims to reduce secondary impact via an eggshell-like coating over an adhesive layer, such that insects and other small animals and debris are not constantly accumulating on the surface, but where a pedestrian may become stuck to the adhesive layer in the event of a collision.  By securing the pedestrian to the vehicle, the idea is that opportunity for serious injury may be reduced, due to the avoidance of secondary impact.  For a visual representation, refer to the figure below taken from the patent.

           

 

            While such an approach is certainly different (and may or may not ever be implemented), it serves the purpose of illustrating the importance of taking a broad approach to intellectual property pursuits in this exciting new era of autonomous vehicles.  Such an approach should not only be viewed as appropriate for the autonomous vehicle space.  Whatever industry you are involved in, are you thinking outside the box to develop your intellectual property portfolio?

 

PORTFOLIO DEVELOPMENT

As technologies progress and change, so should your approach to developing and managing your IP portfolio.  Years ago, it used to be sufficient to secure one or two patents on a new product.  These days, more and more companies are looking to expand developed concepts across many platforms in order to secure robust and broad IP portfolios.  As one example, reported in SAE, Case Construction Equipment recently filed thirty (30) patent applications on a compact dozer loader.  The compact dozer loader represents a cross-over between features of a compact track loader (CTL) and features of a bulldozer, and is configured to run all of the attachments that one might use for skid steers and CTLs, thus reducing the need for contractors or other users to own multiple pieces of equipment.  The patent applications are directed to many concepts, from the frame to the CTL-dozer cross-over controls.

To develop a broad IP portfolio in heavy industry, consider how products across various lines could reuse inventive concepts so that new concepts for a given component, such as the skid steer described above, might relate to larger or other related equipment. Your IP strategy should recognize the potential for cross-over and reuse of inventive concepts up front, and while you may harness the inventive concept from a certain product, you should also consider broadening to other example products and think about how the inventive concept would be adapted to those products.