2 Jesus J. Hernandez Patent Attorney Office of Policy and International Affairs The INPI-USPTO Patent Prosecution Highway Pilot Program Seminario Sobre Projeto Piloto de Exame Copartlhado Prioritario São Paulo, Brazil May 25, 2016

Agenda PPH in the US 3   Background  Moving Forward 

 4 Background

5  The United States and Brazil agreed to expand economic cooperation by – aligning regulatory standards and – developing single window systems to facilitate trade, – launch a work sharing program on patent applications, and – expand infrastructure investment opportunities for both countries. 5 Presidential Visit: June 30, 2015

6 Background  Official title: Joint Statement Between the Government of the US and the Government of the Federative Republic of Brazil on Patent Work Sharing between Patent Offices Signed by: MDIC Minister Armando Monteiro Neto, and Secretary of Commerce Penny Pritzker Recognizes: – that patent work sharing may serve as a driving force for improving patent quality and facilitating the examination of patent application – Acknowledges that patent work-sharing arrangements may contribute to promotion of innovation and investment 6 US-Brazil Joint Statement on Patent Work-Sharing

7 Background  Announcement and Reception 7 Patent Prosecution Highway Pilot Program Bringing PPH into Fruition

8 Background  Implementation: – Staff at both Offices Make official Publications announcing the program INPI: Revista da Propriedade Industrial USPTO: Official Gazette – Dedicated Websites Go live for both offices Launch: January 11, Patent Prosecution Highway Pilot Program Bringing PPH into Fruition

 9 PPH in the US

10 PPH in the US  PPH is a system of work sharing that improves examination efficiency by reducing duplication of effort among patent offices. PPH enables an applicant who has received a determination of allowable claims from one office to obtain fast track processing of corresponding claims in other offices. 10 What is PPH?

11 PPH in the US  PPH Modalities Original "Paris" PPH Framework – When an applicant receives a ruling from a first office that at least one claim in their application is allowable, the applicant can request to enter the PPH program in a second office (Office of First Filing -> Office of Second Filing) PPH MOTTAINAI: – Eligibility based on available work from a participating office on a patent family member, regardless of order of filing (Office of Earlier Examination -> Office of Later Examination) Patent Cooperation Treaty (PCT) PPH – PCT work product from an patent office acting as a International Searching Authority (ISA) or International Preliminary Examination Authority(IPEA) Global/IP5 PPH – Multilateral PPH encompassing PPH Mottainai and PPH PCT in a single collaborative framewor. 11 PPH modalities

12 PPH in the US  12 USPTO PPH Agreements: Global USPTO PPH Agreements: Global PPH

13 PPH in the US  IP5 PPH United States Patent and Trademark Office (USPTO) European Patent Office (EPO) Japan Patent Office (JPO) Korean Intellectual Property Office (KIPO) State Intellectual Property Office of the People’s Republic of China (SIPO) 13 USPTO PPH Agreements: IP5 USPTO PPH Agreements: IP5 PPH

14 PPH in the US  14 USPTO PPH Agreements: Bilateral USPTO PPH Agreements: Bilateral PPH

15 PPH in the US  Cases completed between January and June Number of Examiner Actions Needed to Complete Prosecution at the USPTO Fraction of Applications

16 PPH in the US  Terminal Disposal Comparison between PPH and Non-PPH Prosecution Percent of Applications with at least one RCE* Reduced Appeal Rates* Overall Allowance Rate** First Action Allowance Rate*** PPH Applications 12%0.3%82.3%23% Non-PPH Applications 25%2.5%68.3%13% Examiner Actions include restrictions, non-final rejection, final rejection, ex parte Quayle, allowance, Interference, SIR disposal, Rule 105 requirement, examiner’s answer, advisory action, miscellaneous action with SSP, first action interview actions, examiner initiated suspension and abandonment after PTAB decision * Cases completed in CY 2013 ** Cases completed between January and June 2014 *** Cases completed between July and December

17 PPH in the US  Things to Consider: PPH at USPTO: – Technology neutral – No limitations on filing dates – No limitations on patent family PPH at INPI: – Limited to oil and gas technologies – Limited to applications filed at INPI as of January 1, 2013 – Limited to “applications in the same family” as defined by INPI 17 The USPTO-INPI PPH Aspects of Pilot Program

18 PPH in the US  Anticipated Drivers for Filing PPH in USPTO – Clean Energy Pilot Program – INPI Prioridade Brazil Pilot Program – Other accelerated examination programs at INPI (startup financing, etc.) 18 The USPTO-INPI PPH Aspects of Pilot Program

19 PPH in the US  PPH Website for PPH Information: h/index.html 19 Patent Prosecution Highway Pilot Program Bringing PPH into Fruition

20 PPH in the US  PPH Website for PPH Information: h/index.html 20 Patent Prosecution Highway Pilot Program Bringing PPH into Fruition

21 PPH in the US  Dedicated USPTO-INPI PPH site includes links to: Original MOU text Official Gazette Announcement USPTO Petition Form INPI’s Resource page 21 Patent Prosecution Highway Pilot Program Bringing PPH into Fruition

22 PPH in the US  Streamlining PPH Processing by Using Common Format 22 Filing a PPH Petition in the USPTO USPTO Form

23 PPH in the US  What does the new PPH Form Request from Applicants? Identifying Information about the Counterpart INPI Application Most Recent INPI Action A List of Prior Art cited by INPI Copies of all prior art that is not a US patent or patent application A listing of claims correspondence between INPI and USPTO applications and how they correspond with each other. 23 Filing a PPH Petition in the USPTO

 24 Moving Forward

25 Moving Forward  25 Notable Patenting Metrics *Data from: IP5 Statistics, available at

26 Moving Forward  26 Notable Patenting Metrics US Patent Applications v. EPO Patent Applications of Brazilian Origins *Data from: IP5 Statistics, available at

27 Moving Forward  27 Notable Patenting Metrics ** Filing Data includes Serialized and RCE applications * Data from USPTO Office of Patent Information Management, as of 5/20/16 US Applications/Patents with a Named Inventor from Brazil

28 Moving Forward  28 Notable Patenting Metrics Recipients of 5 or More Utility Patents from Brazil, * Data from USPTO Office of Patent Information Management, as of 5/20/16

29 Moving Forward  29 Notable Patenting Metrics Top US Classes for Applications of Brazilian Origin - IPC *Data from: IP5 Statistics, available at es.org/statistics/statist icaldata.html

30 Moving Forward  Top Technology Classes - USPC/Aggregate 30 Notable Patenting Metrics * Patent origin is determined by the residence of the first-named inventor. Technology class is determined by the primary classification assigned to a patent. Some classes have been combined together under a single class identifier. Please note that the U.S. Patent and Trademark Office has transitioned from the U.S. Patent Classification System (USPC) to the Cooperative Patent Classification System (CPC) and that USPC classifications generally are no longer available for U.S. utility patents that issued after early June, Therefore, in this report, USPC classifications for utility patents issuing after early June 2015 have been determined as a best estimate based on USPC classifications that were assigned to the associated patent applications during early processing stages and based on other information, as available.

31 Moving Forward  For general information concerning PPH, visit If you have specific questions about PPH, please To receive future USPTO updates on PPH, sign up for USPTO’s e- Commerce e-Alerts by visiting: 31 For more Information on PPH

32 Thank You! Jesus J. Hernandez Patent Attorney Office of Policy and International Affairs Jesus J. Hernandez Patent Attorney Office of Policy and International Affairs