The USPTO and the Israeli patent office have recently announced a Patent Prosecution Highway pilot program to begin on July 1st.

The USPTO will accelerate allowed Israeli applications and vice versa.

With the Israeli patent office’s policy of automatically granting patents allowed in the US once they have reached examination, it will in fact render nearly any US patent allowed and granted in Israel shortly after a grant in the US.

With the Israeli patent office’s new program of accelerating patent applications initially filed in Israel, this program may create one of the fastest routes of reaching examination at the US.

Good luck! 

Source: http://www.uspto.gov/news/pr/2011/11-39.jsp

We often write about the benefits of the new bilateral conventions called Patent Prosecution Highway (PPHs). A while ago, we suggested filing a patent application in Europe or in the UK first, and when the application is allowed, filing in the US and requesting accelerated examination (“petition to make special”) based on the PPH.

One of the downsides of the PPH is that it forces the applicant to submit a practically identical (“corresponding”) set of claims in the US, once the UK or the European patent is allowed. If the applicant narrowed its claims during prosecution in the UK or Europe, he may wish to refrain from filing a PPH merely to keep the scope of the US application more broad.

One should consider that this is not exactly the case, and this pitfall can be avoided in the US by using the continuation practice. One can file a US application, and indeed file it with a set of claims corresponding to the allowed set of claims in Europe or the UK. At the same time, it is possible to file a new, broader, set of claims in a continuation application. If the first application reaches examination it is likely that the continuation application be examined as well, and by the same examiner.

Such a strategy will allow an applicant for a patent in the US to enjoy the benefits of the PPH, and at the same time, refrain from limiting the scope of the application.

The Israeli Patent Office considers entering into a Patent Prosecution Highway (PPH) agreement with the USPTO.

PPH is a convention that allows accelerated examination of an application which claims priority from an application that was previously allowed in another patent office.

In order for an application to be eligible to a PPH, all claims should be similar to the claims of the allowed application.

The Israeli Patent Commissioner requested the public to comment on the implementation of the program, noting, in his notice, that such a program may create a lot of pressure on the patent office if applied.

As much as I try, I cannot understand why the commissioner of patents and trademarks thinks that the PPH may create any kind of burden on the patent office. PPH accelerates the examination ahead of line. However, in view of clause 17(c) of the patent act and the relevant commissioner circulars, an application that was allowed in another patent office will not be examined anyway, but rather, will be automatically granted, as a matter of law. Where is, then, the pressure?