1. THE INTELLECTUAL PROPERTY MINUTE
MARCH 2011: FULL SPEED AHEAD ON THE PATENT PROSECUTION HIGHWAY
The patent prosecution highway (PPH) is based on bi-lateral (and multi-lateral) agreements between the various patent
offices. Under the PPH, an Applicant receiving a decision from a first patent office (FPO) allowing a claim(s) may
request that a second patent office (SPO) “fast track” the examination of corresponding claims in that second office.
While the PPH will leverage fast-track examination in the SPO to allow these corresponding patent to issue faster and
more efficiently, it does not expedite prosecution in the FPO.
The PPH process is quite simple. To participate, an Applicant must first receive a favorable action from the FPO. Then a
formal request must be filed with the SPO, who will then accelerate examination of the corresponding claim(s). As well
as reduced delays, Applicants will benefit from examiners taking notice that claims with the same limitations were
reviewed and found patentable by another—and hopefully—well-respected office. Preliminary indications are that PPH
requests can save, on average, about one-office-action-response per country.
The USPTO has ongoing PPH agreement with Australia, Canada, Denmark, EPO, Finland, Germany, Japan (JPO), Korea
(KIPO), Russia, Singapore, Spain, and the UK. The most current list of foreign offices is listed on the USPTO web site at
http://www.uspto.gov/patents/init_events/pph/index.jsp. And it is very likely that this list will expand in the near future.
There exists one obstacle with the using the PPH: the claims in the SPO must directly correspond with those allowed in
the FPO. Often, the claims prosecuted in one country do not directly correspond to those prosecuted in another. So for
foreign applications where the PPH will be used, the practitioner must maintain a greater consistency in claim drafting and
claim amendments throughout the prosecution.
A pilot PPH project for PCT applications (the PCT-PPH) is ongoing, but only between the USPTO, EPO, JPO, and KIPO.
With the PCT-PPH program, the accelerated examination is based upon a favorable PCT written opinion (WO) or
international preliminary examination report (IPER). Like the regular PPH program, a request must be filed in the U.S.
application once a favorable WO or IPER is received and the claims in the U.S. application must be similar to or narrower
than the PCT claims. However, the request under the PCT-PPH process is a bit more detailed than a regular PPH request.
As well, there is an additional obstacle with the PCT-PPH program that the International Search Authority (ISA) must be
the EPO, the KIPO, or the JPO. And since some of these offices are not extremely quickly in issuing the IPER or WO,
their delay can limit the effectiveness of the PCT-PPH program.
There are various tactics that can be used to take advantage of both of these PPH programs. First, the most obvious tactic
is that once a claim(s) in any patent family is allowed, requests in the corresponding applications should be filed and
pursued as quick as possible. The second tactic is less obvious, but definitely more useful. Where the U.S. application
has been filed and the foreign filing strategy has already been determined, an application can be immediately filed in the
“quickest” patent office that participates in the PPH program without waiting the normal 1 year period. The rest of the
foreign applications can be filed at the regular 1 year (or 30 month) deadline. Hopefully, that “quicker” patent office will
then examine—and hopefully allow—a claim well before the 3-4 years it will take for the USPTO to pick up the case.
Such a scenario would then allow a PPH request to be filed in the U.S. application, with the result that the U.S. examiner
would have to pick up the U.S. application well before he normally would.
