Should my Patent Application Merge onto the Superhighway
Frequently Asked Questions about the Patent Prosecution Highway
What is the Patent Prosecution Highway (PPH)?
It may be possible to expedite the examination process in the US by taking advantage of earlier searches and opinions on the PCT International application or the underlying Priority Application. The Patent Prosecution Highway (PPH) is a cooperative program between the USPTO and a number of foreign patent offices.
If a favorable opinion has been received in a participating patent office, then a “petition to make special” can be filed before substantive examination begins in the US. Most often, the PPH petition is filed at the time of filing.
At present, there are over thirty participating offices including the IP5 (Japan, Korea, EPO, China in addition to the US). Other patent offices include the Global PPH countries, namely, Australia, Austria, Canada, Chile, Colombia, Denmark, Estonia, Finland, Germany, Hungary, Iceland, Israel, Japan, Korea, New Zealand, Nordic Patent Institute (Denmark, Iceland, Norway), Norway, Peru, Poland, Portugal, Russia, Singapore, Spain, Sweden, UK and Visegrad Patent Institute (cooperation between Czech Republic, Hungary, Poland, and Slovakia). Finally, there are bilateral agreements between the USPTO and Brazil, the Eurasian Patent Office, Mexico, Nicaragua, Philippines, Romania, Saudi Arabia, and Taiwan.
How does a patent application merge onto the PPH?
To achieve the granting of the PPH petition, the claims in the national stage application must sufficiently correspond to the claims that received favorable opinions from the foreign patent office. Rather than seeking broader claims, the claims submitted in the US need to correspond to the claims that have been favorably reviewed.
Additionally, the petition requires the Applicant to provide the correlation between the national stage claims and the claims that received a favorable opinion. In particular, the claim correspondence must be provided. Amendments to the claims are generally limited to non-substantive procedural matters, such as complying with certain claim requirements under US law.
Plus, the opinion itself must be provided. For example, if reliance is made on a International Search Report issued in the PCT International phase by a search authority that is also a participating office of the PPH program, then the entirety of the search report is provided to the USPTO.
What are the advantages of using the PPH?
Typically, the USPTO decides whether to grant the PPH petition within two months. If it is granted, the time to the first substantive office action from the USPTO is reduced from the typical 14-28 month time period to about 2-5 months. This can result in substantial expediting of the initial review patent application.
USPTO statistics suggest that both the rate of first office action allowance is substantially higher with applications that take advantage of the PPH. That is, the first action received is a notice of allowance, which can save months of pendency. Further, the USPTO statistics also suggest that fewer final Office Actions and RCE are filed in applications that are in the PPH program, again, shaving months off of prosecution time.
Our intellectual property attorneys have seen an increase in the volume of Examiner Initiated phone calls in cases where the application is in the PPH program to resolve issues without the entry of a formal Office Action.
The PPH has no additional USPTO official filing fee, so the filing of a PPH request should not add much if anything to the cost of the initial patent filing. And, the savings can be substantial with greater first Office Action allowance rates, fewer Final Office Actions and fewer Requests for Continued Examination. The lower rates of each of these represents significant savings to the stakeholder.
Compact Prosecution and Improved Success Rates
When a patent application has corresponding filings in multiple different countries or regions, the sheer volume of paperwork generated and the overlapping issues that occur can greatly increase the complexity. With an already complicated system of filings, deadlines, prior art rules, claim structures, all of which vary from jurisdiction to jurisdiction, any simplification is greatly welcomed. This is even more significant where the streamlining results from substantive patent office matters, such as prior art, claim similarities and the like.
Also, the success rates of achieving an allowance and an issued patent are higher than with patent applications that are not in the PPH program. In fact, USPTO statistics indicate that on a percentage basis allowance rates may be 10% higher for patents that are in the PPH program.
Are there any disadvantages to the fast track of applications using PPH?
There are limitations to the PPH procedure, so it may not be right for every application. One reason is that there are restrictions on the amendment procedure for an application where the PPH request has been granted and the application is in the PPH program.
Narrowing amendments may be refused by an Examiner in certain situations. There are issues surrounding the narrowing of an independent claim, and, relying on dependent claims (which may then be incorporated into independent claims). Some Examiners may impose guidelines relative to amendments which are not present in similar applications that are not in the PPH program.
Additionally, it is necessary in each of the amendments that a certification be made that indicates that the new claims sufficiently correspond to allowed claims or narrows the claim. In some instances, desired amendments to a claim may not necessary result in a claim that is narrower, and, such a certification is not possible. Therefore, such a claim cannot be presented in an amendment.
Benefits tend to outweigh disadvantages
Watson IP has prosecuted many applications through the PPH, and, generally, we have been satisfied with the results of such prosecution – when it is properly used in the correct circumstances.
For example, we do not suggest a PPH request, where we, for example, believe that broader claims are likely to be allowable in the US. In such an instance, we would file an application without a petition to enter the PPH program.
Due to the nature of the patent process in the US, we often suggest to our clients the filing of a continuation with different claims sets (or a divisional application where a restriction occurred in the case). A continuation is also a possibility if the an application that is in the PPH encounters the problems associated with amendment practice in the PPH, we can simply file a continuation of the case and proceed outside of the PPH. First, this tends to occur in a very small number of cases that start in the PPH program. Second, in many such cases, our office was contemplating the filing of continuations and the like if and when the case was allowed in the first instance.
As a result, in most instances, the PPH benefits outweigh the disadvantages for cases that have received a positive search report from participating office.