The Patent Prosecution Highway: Faster Patent Rights at Reduced Costs
August 14, 2016
The Patent Prosecution Highway (PPH) is an international framework in which a patent application whose claims have been determined to be patentable by one patent office is eligible for accelerated examination at another patent office. The PPH speeds up the examination process for corresponding applications filed in participating intellectual property offices. Patent offices in Australia, Canada, China, Europe, Germany, Japan, Korea, Russia, United Kingdom, and United States, among others, have agreed to share search and examination results, and implement fast-track examination procedures to allow applicants to reach final disposition more quickly and efficiently than standard examination processing. In addition, the United States has entered into bilateral PPH agreements with Columbia, Czech Republic, Mexico, Nicaragua, Philippines, Poland, Romania, and Taiwan.
In order to be eligible for PPH, an applicant must (1) have received an indication of allowable subject matter in a related application from a partnering PPH; (2) the application with the indication of allowable subject matter and the present application share a common earliest priority date; and (3) examination has not begun on the present application. Plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are not eligible for the PPH.
Substantive examination under the PPH is conducted according to the law and guidelines of each patent office in the same way as non-PPH applications. While there is no guarantee that the result of the PPH examination will match that of the partnering patent office, PPH applications generally enjoy higher allowance rates, fewer office actions per disposal, reduced request for continued examination (RCE) filing rates, and reduced appeal rates than non-PPH applications.
For applicants interested in quickly obtaining patent rights around the world, the PPH is another reason to request prioritized examination in the United States. In prioritized examination, a Notice of Allowance may be received within twelve (12) months after filing. The applicant can then use the PPH to expedite examination in corresponding foreign applications. Alternatively, an applicant can use an allowance in a relatively fast foreign jurisdiction; e.g., Korea, to expedite examination of the corresponding United States application under the PPH.