Patent Prosecution Highway

The USPTO is quickly moving forward with its Patent Prosecution Highway (PPH) and applicants may want to consider whether it is time to jump aboard.

The PPH is based on a series of bi-lateral (and multi-lateral) agreements between the various world patent offices.  From the perspective of the patent offices, PPH provides a better avenue for sharing information and for reliance on work done by another office.  The offices hope that PPH will ease their workloads and help eliminate application backlogs.  For applicants, PPH appears to be a valuable mechanism for reducing both the costs and delays associated with multi-national patent protection. 

To participate in PPH, an applicant must first receive a favorable action from the Office of First Filing (OFF).  Upon request, participating worldwide offices will then accelerate examination of the corresponding claims.  In addition to speed, applicants will benefit from examiners taking official notice that claims with the same limitations were reviewed and found patentable by another well-respected office.  Preliminary studies suggest that PPH applications tend to save about one-office-action-response per country.  

The USPTO has ongoing PPH agreement with Australia, Canada, Denmark, EPO, Finland, Germany, Japan (JPO), Korea (KIPO), Singapore, and the UK. [Link]

A pilot PCT-PPH project is ongoing. With the PCT-PPH, the accelerated examination is based upon a favorable PCT written opinion or international preliminary examination report. The PCT-PPH pilot is only between the USPTO and the EPO, JPO, and KIPO.

Applicants appear to have two major concerns with the use of the PPH. First, the PPH claims must directly correspond with those allowed in the Office of First Filing. Although technical amendments are OK, an the particular claims obtained in one country might not correspond to those obtained in another country. Second, the PPH appears to be quite high-speed. Thus, applicants seeking delay might be shocked.

30 thoughts on “Patent Prosecution Highway

  1. The PPH is such great news, and certainly a welcome development in patent law. International worksharing efforts are critical in our current global environment. Considering the USPTO’s backlog, I can’t imagine anyone complaining about the PPH’s high speed and efficiency.

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  2. Canada also has a pretty painless expedited examination process with no claim limitations like the PPH.

    Who will benefit from the new US-Hungary PPH? Do any US applicants file directly in Hungary rather than through an EP application? (Why?)

    Assuming 99% of the benefit will flow to Hungarian applicants, why is the USPTO doing this? U.S. applicants will face further delay as Hungary-US PPH applications get to cut to the front of the line.

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  3. Bilateral agreements are much better than the bloated expensive PCT approach anyday.

    Bilateral agreements are great, if you only care about your country and the country next to it.

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  4. Canadian Patent Office allows PPH applications in about 3-6 months if CA claims are identical to US allowed claims. If claims are different in any way, the PPH slows down to regular prosecution speed. This benefits US and CA based applicants who file first in USPTO, are 100% happy with US claims and also file in CA. There is no government fee (yet) so overall it’s not a bad deal. Bilateral agreements are much better than the bloated expensive PCT approach anyday.

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  5. You are confusing quality of the process (which you describe) with quality of the final product (which most people understand the phrase “high-quality examination” to mean)

    On the contrary, almost no one understands this distinction, least of all the Office, with its near perfect quality (reported) in a time of utter nonsense.

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  6. Quality is defined as providing a consistent, well defined product or service.

    You are confusing quality of the process (which you describe) with quality of the final product (which most people understand the phrase “high-quality examination” to mean).

    If someone told you, without any context, that they were looking to go out for a high-quality meal, would you be paying Ronald a visit? I think not.

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  7. Regarding Restricted’s post, I have had success with the opposite situation. I had a series of divisional/continuation foreign applications where the parts were allowed at different times. I consolidated the claims from two of the allowed foreign applications into a single US PPH Request, and the US application has since been allowed. When other parts were allowed, I later used the PPH program again.

    Magdelene Greenlief, the USPTO’s PPH point-of-contact, has been helpful with answering any complex questions. I’m not sure of her number off the top of my head, but she should be available on the employee locator.

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  8. The PPH is only a way to get your application to the front of the examination queue. So, there is no “voila” based on a favorable ISR, just a faster first office action in the subsequent patent office.

    The USPTO statistics that support the PPH as a way to streamline prosecution are mostly based on applications going from Japan to the US. Since Japan usually allows narrower claims than the U.S., its not surprising that starting U.S. prosecution with claims that were allowed in Japan would expedite prosecution.

    It will be interesting to see if similar benefits arise from other PPH programs.

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  9. These factors tend to go against correctness (i.e., whether or not an applicant’s claims are allowable under the law and in view of the prior art),

    Should read “whether or not an applicant’s claims are patentable under the law and in view of the prior art”.

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  10. Quality is defined as providing a consistent, well defined product or service. Competition drives quality because consumers have a choice. Competitors need to distinguish themselves from each other, so it is important that they provide a consistent product.

    You clearly have a different definition of “quality” than most of us do. Quality is a distinction defined by degree or grade of excellence. Consistency is a factor that affects quality, but in the realm of patent prosecution, correctness is the driving factor that people consider when measuring quality.

    Competition drives quality in the direction that customers want. In the case of patent prosecution, the customers are the applicants, and they typically want speedy examination and wide-ranging patent protection. These factors tend to go against correctness (i.e., whether or not an applicant’s claims are allowable under the law and in view of the prior art), as high-speed examination may not give the Examiner sufficient time to search the prior art for relevant references, and a push to allow wide-ranging claims would likely lead to overly broad claims getting issued.

    Call me crazy, but this “competition” that you trumpet does not strike me as promoting quality; it promotes something akin to forum shopping.

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  11. With the PCT-PPH, the accelerated examination is based upon a favorable PCT written opinion or international preliminary examination report. The PCT-PPH pilot is only between the USPTO and the EPO, JPO, and KIPO.

    So if I get a favorable IPER from the USPTO, I can enter the EP with the identical claims under this program and VOILA! I get my EP patent (pending opposition)?

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  12. Competition and choice do not logically imply a tendency toward quality, unless you define “quality” as “whatever people are willing to buy”.

    Quality is defined as providing a consistent, well defined product or service. Competition drives quality because consumers have a choice. Competitors need to distinguish themselves from each other, so it is important that they provide a consistent product.

    Building on the food analogy, McDonalds provides an extremely consistent product. When you walk into a McDonalds, you know what you are getting. Few would consider it gourmet, but it is very high quality.

    Similarly, when you walk into a Burger King, you also know what you are getting and you know it will be slightly different than what you get at McDonalds. Both companies know that they must maintain that slight difference. The only way that can happen is if they maintain outstanding consistency and hence quality.

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  13. There are many dimensions to quality, however.

    There are many dimensions to quality food, and yet I think you’ll agree there are quite a few providers who still work to metrics you might associate with “customer satisfaction” but you wouldn’t necessarily associate with “quality”, such as speed, cost, convenient physical location, and marketing their services as desirable. As a result, they dispense products and services you wouldn’t necessarily associate with “quality”.

    Competition and choice do not logically imply a tendency toward quality, unless you define “quality” as “whatever people are willing to buy”.

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  14. the choice is for something other than high-quality examination

    Understood. There are many dimensions to quality, however. Some offices may exercise a great deal of discipline in following published examination guidelines. Others may give examiners considerable discression in using their personal judgement. Both approaches can produce a high quality examination depending upon how they are managed.

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  15. The essense of competition is choice.

    Indeed. But if the choice is for something other than high-quality examination, the essence of the competition will be in a direction other than toward high-quality examination.

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  16. Hi Dennis,
    Thank for TWO responses to my comments – I agree, it’s important that US-based practitioners do not neglect foreign filing license.

    However, my question still stands: “Does the filing the US prov before the UK application ‘mess up’ the eligibility of the US non-prov [i.e. which claims Paris-convention priority to BOTH the US prov and the UK app] for the PPH?”

    I claim the answer is “NO” – is there any one out there who can confirm or prove me wrong ???

    PS If the US non-prov application would not be eligible for the PPH, then most US-based inventors would be “shut-out” of the PPH.

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  17. AnonymousAgent: You are correct that all of the PPH rules regarding Office-of-first-filing and office-of-second-filing are based on where you file the application rather than the location of the inventors/owners. A US-based applicant can file abroad (such as in the UK) before filing in the US. However, to do so, the US-based applicant must first obtain a foreign filing license.

    FishBones: The second office will still do a search and may find new art. The second office is not under any obligation to issue a patent, but only agrees to be “on notice” of the judgment of the first-office.

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  18. FOLLOW-ON COMMENT:

    IF I WAS NOT CLEAR, IN MY “TEST CASE” I WANT TO ARGUE THAT WE CAN DESIGNATE THAT USPTO AS “THE OFFICE OF SECOND FILING” (this is what we want to avoid the 3 year backlog) DUE TO THE VALID PARIS CONVENTION CLAIM.

    I WANT TO SAY THAT PARADOXICALLY, WE CAN CALL THE UKIPO THE “OFFICE OF FIRST FILING” AND THE USPTO THE “OFFICE OF SECOND FILING.”

    SINCE THE UKIPO DOES NOT HAVE A 3 YEAR BACKLOG, WE CAN GET A FAST OA IN THE USPTO (even though we ‘stopped the 102(b) clock with a US prov that was filed before the UKIPO filing”

    ANOTHER NOTE – unlike the PCT case (where the PCT must be the first-filed document and contain no priority claim), there seems to be no such requirement for regular UKIPO filings that are NOT from a PCT

    ANYONE — PLEASE CONFIRM OR EXPLAIN WHY I AM MISTAKEN.

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  19. The second office cannot cite additional more relevant art?

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  20. Dennis:
    This is VERY important because most US practitioners (even based outside of the US) file a US prov BEFORE foreign filing because only a US prov stops the 102(b) clock from ticking.
    =====
    So the $64,000 is — “WHICH OFFICE WOULD BE COUNTED AS THE OFFICE OF FIRST FILING” ???

    I would argue that even if a US Prov is filed first, we could say that that the UK app was “first filed.” Because a UK app was filed in April 2010 and a US non-prov app was filed in October 2010 (which is AFTER April 2010), then for a pair of applications (X,Y) [X is the UK application filed April ’10, Y is the US non-prov file Oct ’10], X was filed first (relative to Y), and Y has a valid Paris convention priority to X(regardless of the fact that Y also has another valid priority claim to Z filed Oct. ’09].

    The USPTO forms tend to support this point of view – see “http://www.uspto.gov/forms/sb0020uk_fill.pdf” has to FOLLOWING text:

    The above-identified application (1) validly claims priority under 35 U.S.C. 119(a) and 37 CFR 1.55 to one or more corresponding UKIPO application(s) or to a PCT application that does not contain any priority claim, or (2) is a national stage entry of a PCT application that does not contain any priority claim.

    This says NOTHING about “first filing” – only about a valid Paris convention priority claim.

    COULD SOMEONE ELSE CONFIRM (or correct me) please !!! HELP!!

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  21. Sure, there will be some people who prefer to have their applications searched by the office that does the best searching, but there will also be some who prefer to have their applications searched by the office most likely to find the claims allowable.

    The essense of competition is choice.

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  22. Anonymous Agent: My understanding of the system is that PPH does not help speed-up prosecution in the office of first-filing (OFF). Rather, PPH only comes into play once the OFF has decided that the claims are patentable. At that point, the applicant can then go to the office of second filing (OSF) and request speedy examination based on the OFF allowance.

    Thus, because most US-based applicants file-first in the US, PPH does not help to speed their US prosecution. It could, however, help speed your prosecution at the EPO and in Japan.

    Your particular example is tricky because the first provisional application was filed in the USPTO, but the first non-provisional was filed in the UKIPO. In that situation, I don’t know which one would be counted as the Office of First Filing.

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  23. What happens if you file in the U.S. and get a restriction requirement (which in my cases is 100% of the time)–could you prosecute each group independently in the U.S. and then, after allowance of all claims, pursue the entire bundle on the PPH abroad?

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  24. One sticking point with the PPH is the issue of eligibility – MANY (maybe even most) application are not eligible.

    Last month, another excellent patent blog wrote that the PPH will be closed to most US-based inventors because “the first patent application be filed first in a Patent Office other than the USPTO in order to be advanced out of turn within the U.S.”

    AT THE TIME, I WROTE THE FOLLOWING:

    Are you sure? I respectfully submit that you are mistaken.

    I think it is enough just that a foreign application is filed during the Paris convention year and that there is no requirement of a FIRST FILING of the foreign application.

    Consider the following scenario:

    October 1, 2009 – applicant filed a provisional in the USPTO.
    November 1, 2009 – application is granted a foreign filing license.
    April 1, 2010 – applicant re-files the same exact provisional in the United Kingdom – no export laws are violated.
    October 1, 2010 – applicant then files a non-provisional application CLAIMING PRIORITY to BOTH the original provisional application AND to the UK application.

    July 2011 – UK patent granted.

    August 2011 – applicant requests accelerated examination based on the Patent Prosecution Highway.

    THIS IS IMPORTANT – was the other blogger correct (i.e. that the FIRST application needs to be filed abroad) or was I correct (i.e. that some application is filed abroad during the priority year – we claim priority to this application in our US non-provisional filing – no requirement for FIRST application to be filed broad) ??????

    I wrote the USPTO who seemed to agree with my position (i.e. as long as we have a valid Paris convention claim) – however, we all know that the USPTO is not bound by what they say on the phone and what they write in emails.

    HELP !!!! (preferably, from someone who actually used the program).

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  25. Ya think?

    You wouldn’t be so sure, if you saw the vitriolic opposition in the other thread to any implication that a US examiner could give a foreign examiner’s opinion any weight at all.

    Or does that only apply to rejections?

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  26. IANAE there will also be some who prefer to have their applications searched by the office most likely to find the claims allowable.

    Ya think?

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  27. holds the promise of raising overall quality of examination.

    I’m not sure I understand how that would happen. Seems to me, these claims will tend to be examined in depth only by whichever of the mutually-trusted patent offices is fastest. The current duplication of searching and examination should, in the aggregate, produce more and better prior art than trusting any one of those patent offices to do the job.

    Sure, there will be some people who prefer to have their applications searched by the office that does the best searching, but there will also be some who prefer to have their applications searched by the office most likely to find the claims allowable.

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  28. This might be an effective way to develop competition between patent offices and that holds the promise of raising overall quality of examination. John Duffy has some excellent publications on this subject. link to law.gwu.edu

    Reply

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