patent prosecution highway - inpi · 24 pph in the us • technology neutral (only in uspto) •...
TRANSCRIPT
Jesus J. HernandezPatent AttorneyOffice of Policy and International Affairs
The INPI-USPTOPatent Prosecution Highway Pilot Program
American Chamber of Commerce - RioRio de Janeiro, Brazil February 23, 2016
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Agenda
PPH in the USEconomic Background
Moving Forward
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Economic
Background
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Background
• Historic: The United States was the first country to recognize Brazil's independence in 1822.
• Consequential: The two largest democracies and economies in the Western Hemisphere.
• Ongoing Engagement in Areas of Mutual Interest: – 10 agreements signed in March 2011; 5 in April 2012;
and 11 in June 2015.
US-Brazil Relations: Robust and Extensive
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Background
US Exports to Brazil
• Brazil was the United States' 7th largest goods export market in 2013.
• U.S. goods exports to Brazil in 2013 were $44.1 billion• The top export categories historically are:
– Machinery, Mineral Fuel, Aircraft, Electrical Machinery, and Organic Chemicals.
Snapshot of Trade RelationsExports/Imports
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Background
Brazilian Import to the US
• The United States is Brazil’s second largest export market.• U.S. goods imports from Brazil totaled $27.6 billion in 2013• The five largest import categories historically are:
– Mineral Fuel and Oil, Iron and Steel, Special Other (returns and repairs - vehicles), Machinery, and Aircraft.
Snapshot of Trade RelationsExports/Imports
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Background
Snapshot of Trade RelationsExports/Imports
29.1
71.8
17.9
27.6
44.1
0.0
10.0
20.0
30.0
40.0
50.0
60.0
70.0
80.0
2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014
Bill
ions
of U
S$
Growth of Bilateral Trade
Total TradeImportsExports
11.2
*Data from: US International Trade Administration
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Background
US FDI to Brazil• U.S. foreign direct investment (FDI) in Brazil (stock) was $79.4 billion in
2012 (latest data available).• U.S. direct investment in Brazil is led by the manufacturing and
finance/insurance sectors.
Brazilian FDI to the US• Brazil FDI in the United States (stock) was $3.6 billion in 2012 (latest data
available).• Brazil’s reported direct investment in the U.S. is led by the wholesale trade
sector.
Snapshot of Trade RelationsForeign Investment
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Background
Facilitating the movement of trade, investment, and people between the United States and Brazil, expanding prosperity in both countries, and fostering dialogue:• The Economic and Financial Dialogue - promotes common
positions on global policy issues.• The Joint Commission on Economic and Trade Relations -
explores greater cooperation on economic and trade issues.• The Commercial Dialogue - develops strategies to eliminate
impediments to trade and investment.
Bilateral Economic Relations
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Background
Facilitating the movement of trade, investment, and people between the United States and Brazil, expanding prosperity in both countries, and fostering dialogue:• The CEO Forum - executives advise policymakers on
commercial and economic issues.• The Consultative Committee on Agriculture - seeks to
boost agricultural trade and cooperation.• The Strategic Energy Dialogue - aims to strengthen energy
security, create new jobs and industries, and reduce carbon emissions.
Bilateral Economic Relations
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Background
• Scientific Cooperation: Extensive scientific exchanges at the individual researcher level, as well as bilateral collaborations under the U.S. Department of Commerce: – U.S. Geologic Survey – National Oceanic and Atmospheric
Administration– the Environmental Protection Agency– U.S. Department of Energy– National Institute of Standards and Technology
US-Brazil Cooperation: Science and Innovation
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Background
• Environmental Cooperation: Collaboration in ocean weather monitoring, metrology and standards, environmental impact monitoring, and nanotechnology.
• Clean Energy: In June 2015 launched a Joint Initiative on Climate Change to enhance cooperation on sustainable land use, clean energy, and climate adaptation.
US-Brazil Cooperation: Science and Innovation
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Background
• 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.
Presidential Visit: June 30, 2015
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PPHin the US
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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.
What is PPH?
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PPH in the US
Past 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– An Applicant can rely on the PCT work product from an patent office acting as a
International Searching Authority (ISA) or International Preliminary Examination Authority(IPEA)
PPH modalities
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PPH in the US
PPH modalities
Global/IP5 (PPH 2014-present)• Purpose: Incorporate all PPH enhancements in a single
flexible Frameworks(Mottainai/2.0, Fee removal, PCT-PPH, etc.).– Difficulty in administering all PPH modalities. – Consolidation of all Bilaterals: Recognizing the need and
opportunity for greater efficiency, the USPTO and several other offices consolidated and replaced existing PPH programs, with the goal of streamlining the PPH process for both offices and applicants.
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PPH in the US
Cases completed between January and June 2014
Number of Examiner Actions Needed to Complete Prosecution at the USPTO
0%
5%
10%
15%
20%
25%
30%
35%
40%
1 2 3 4 5 6 7 8 9 10 11 12 13
Non-PPH Fraction
PPH Fraction
Frac
tion
of
App
licat
ions
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PPH in the US
• 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
US-Brazil Joint Statementon Patent Work-Sharing
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PPH in the US
13th Commercial Dialogue (Nov. 19): USPTO and INPI Finalized a Memorandum of Understanding on a
Patent Prosecution Highway Program
Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition
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PPH in the US
Announcement and Reception
Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition
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PPH in the US
• 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, 2016.
Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition
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PPH in the US
• Technology Neutral (only in USPTO)• All INPI Work Product (National and as PCT ISA)• Any Applications• Anticipated Drivers for Filing PPH in USPTO
– INPI Priority Brazil Pilot Program– Clean Energy Pilot Program– Other grounds for acceleration at INPI (startup financing,
etc.)
Patent Prosecution Highway Pilot ProgramAspects of Pilot Program
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PPH in the US
PPH Website for PPH Information:www.uspto.gov/web/patents/pph/index.html
Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition
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PPH in the US
PPH Website for PPH Information:www.uspto.gov/web/patents/pph/index.html
Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition
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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
Patent Prosecution Highway Pilot ProgramBringing PPH into Fruition
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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.
Filing a PPH Petition in the USPTO
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PPH in the US
Streamlining PPH Processing by Using
Common Format
Filing a PPH Petition in the USPTOUSPTO Form
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PPH in the US
• Most Recent INPI Office Action:– INPI Patent Application No.– Filing or Priority Date shared by the INPI and
USPTO patent applications– Type of INPI Work Product Relied upon– Mailing Date of INPI Work Product
Filing a PPH Petition in the USPTOPertinent Sections
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PPH in the US
Filing a PPH Petition in the USPTOPertinent Sections
INPI Work Product
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PPH in the US
Filing a PPH Petition in the USPTOPertinent Sections
• Claims Correspondence Table: – All claims in each U.S. application must sufficiently correspond to
the claims that the INPI found allowable. – If the claims do not correspond to each other, a Petition will not
be granted! 32
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PPH in the US
Filing a PPH Petition in the USPTOPertinent Sections
• EFS-WEB Submission:• USPTO Electronic Filing System
(“EFS-Web”)• Applicants must e-File the PPH
Request and supporting documents via EFS-Web
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Moving Forward
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MovingForward
0
100
200
300
400
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012
2013
2014
US Patent Applications of Brazilian Origin
US PatentApplications ofBrazilian Origin
Notable Patenting Metrics
*Data from: IP5 Statistics, available at http://www.fiveipoffices.org/statistics/statisticaldata.html35
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MovingForward
EPO0
100
200
300
400
EPO
USPTO
Notable Patenting Metrics
US Patent Applications v. EPO Patent Applications of Brazilian Origins
*Data from: IP5 Statistics, available at http://www.fiveipoffices.org/statistics/statisticaldata.html 36
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MovingForward
Notable Patenting Metrics
• Top Assignees of US Patents of Brazilian Origin
Rank Company/Assignee Name1 PETROLEO BRASILEIRO S.A. PETROBRAS 2 WHIRLPOOL S.A.
3 EMBRAER - EMPRESA BRASILEIRA DE AERONAUTICA S.A.
4 FREESCALE SEMICONDUCTOR, INC.
5 INTERNATIONAL BUSINESS MACHINES CORPORATION
6 VOITH PAPER PATENT GMBH 7 PIONEER HI-BRED INTERNATIONAL, INC. 8 NATURA COSMETICOS S/A 9 TYCO ELECTRONICS BRASIL LTDA.10 BRASILATA S/A. EMBALAGENS METALICAS.11 RHODIA POLIAMIDA E ESPECIALIDADES LTDA. 37
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MovingForward
Notable Patenting Metrics
Top US Classes for Applications of Brazilian Origin2014
# Classification40 A61-MEDICAL OR VETERINARY SCIENCE; HYGIENE39 G06 - COMPUTING; CALCULATING; COUNTING20 H04 - ELECTRIC COMMUNICATION TECHNIQUE
2013# Classification35 A61-MEDICAL OR VETERINARY SCIENCE; HYGIENE26 G06 - COMPUTING; CALCULATING; COUNTING13 C07 - ORGANIC CHEMISTRY13 F16 - FLUID-PRESSURE ACTUATORS; HYDRAULICS OR PNEUMATICS IN GENERAL
2012# Classification
32 A61-MEDICAL OR VETERINARY SCIENCE; HYGIENE16 G06 - COMPUTING; CALCULATING; COUNTING
10 F16 - FLUID-PRESSURE ACTUATORS; HYDRAULICS OR PNEUMATICS IN GENERAL
*Data from: IP5 Statistics, available at http://www.fiveipoffices.org/statistics/statisticaldata.html
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MovingForward
Conclusions
• An increasing amount US Patents Applications of Brazilian Origin are being filed per year
• US appears to be targeted market• Both Domestic and Foreign Companies
based in Brazil are contributing to upsurge
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MovingForward
• For general information concerning PPH, visit www.uspto.gov/web/patents/pph/index.html
• If you have specific questions about PPH, please e-mail [email protected]
• To receive future USPTO updates on PPH, sign up for USPTO’s e-Commerce e-Alerts by visiting: http://www.uspto.gov/ebc/optin.html
For more Information on PPH
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Thank You!
Jesus J. HernandezPatent Attorney
Office of Policy and International AffairsEmail: [email protected]
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