Paris, December 2, 2021 – On November 8, 2021, the United States Patent and Trademark Office (USPTO) and the National Institute of Industrial Property of France (INPI) entered a Patent Prosecution Highway (PPH) agreement. Effective December 1, 2021, applicants for a French patent receiving a positive opinion for patentability from the INPI may request accelerated examination at the USPTO using the PPH Pilot program.
This agreement follows changes to examination of French patent applications implemented by the PACTE law. French applications filed on or after May 22, 2020, are now examined for inventive step, which correlates to the obviousness analysis of US patent law. Accordingly, both patent offices now complete an examination with similar patentability standards and such work product may be shared between the patent offices in order to streamline search and examination.
More information on the main developments for patents resulting from the PACTE law is provided here.
Both US national filings claiming priority to a French patent application and US national stage entries of PCT applications will be eligible for the PPH Pilot program provided that the US application contains claims sufficiently corresponding to the claims examined and determined to be patentable by the INPI. As inventive step is not analyzed by the INPI for applications filed before May 22, 2020, only patent applications filed in the INPI on or after this date are eligible for the PPH Pilot program at the USPTO.
Reciprocally, applicants for a US national patent application or PCT patent applications for which the USPTO was the International Search Authority (ISA) having claims determined to be patentable by the USPTO will be able to request accelerated examination of a corresponding French patent application having sufficiently corresponding claims. This is an important change for US applicants, who rank 3rd amongst foreign applicants for French patent applications.
The PPH Pilot Program between the USPTO and INPI will initial run for a three-year period, ending on November 30, 2024. Further information and forms for filing a PPH Request at the USPTO may be found here and for filing a PPH request at the INPI here.
As always, all of Regimbeau’s teams are available to advise you on your particular situation and whether filing of a PPH request is the best strategy for your global patent prosecution strategy.
