Patent Law

Patent Prosecution Highway

By Dennis Crouch

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.

Full post as published by Patently Obvious on June 22, 2010 (boomark / email).