5/1/2009
Fast Track to Action – A Look at the Patent Prosecution Highway
As companies seek efficiency in securing intellectual property rights, patent pendency and expense has become an increasing burden. The time from filing a U.S. utility patent application to first Office Action is now over 24 months and can run as long as five years. Patent applicants can reduce first action pendency, overall pendency, and cost as well as increase the chance for allowance by filing a request for examination under one of the U.S. Patent and Trademark Office's (USPTO) Patent Prosecution Highway (PPH) programs. PPH leverages fast-track patent examination procedures to allow applicants to obtain corresponding patents faster and more efficiently. It also permits each office to benefit from work previously done by the other office, reducing redundancy and cost for applicants.
Foley Partner Jon W. Dudas, former Under Secretary of Commerce for Intellectual Property and Director of the USPTO — under whose tenure the programs were developed — discussed the following topics:
- Benefits and potential trade-offs of PPH
- Steps to implement PPH
- Strategic first filing considerations
- Avoidance of litigation risks
Featured Guest Panelists
- Horace H. Ng, Managing IP Counsel and Director of Patent Procurement, Marvell Semiconductor, Inc.
- Sam Kais, Senior Patent Attorney, Johnson & Johnson Services, Inc.
- Anne Dollard, Deputy General Counsel and Chief Patent Counsel, Takeda San Francisco
Foley Panelists
- G. Peter Albert, Jr., Partner and Chair, San Diego/Del Mar Office Intellectual Property Department
- Antoinette F. Konski, Partner and Chair, Silicon Valley Office Intellectual Property Department
There is no cost to participate in this briefing; however, pre-registration is required. For questions about registering, please contact Zulaikha Rahim at zrahim@foley.com.
Foley will apply for CLE credit after the breakfast briefing.
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