(This article was published as the cover story in the November 2010 issue of IP Today, please click here to download the pdf version of the article.)
Recent developments regarding the Patent Prosecution Highway (PPH) have made it easier to receive faster allowances of certain U.S. patent applications. Not all applications are eligible, but for those that are, patent practitioners are reporting allowances as fast as 2-15 days after filing a petition with the U.S. Patent and Trademark Office (USPTO) to make the application special using the PPH.
The purpose of the PPH is to minimize duplicative searching and prosecution efforts through workload sharing among partnering patent offices regarding applications with common claims. This often results in the expedited allowance of PPH applications and a reduction in prosecution costs. The PPH allows an applicant who has received notification of allowable claims from a first patent office to request fast-track examination of a corresponding application in a second patent office based upon the search and prosecution results of the first patent office. The first patent office is called the Office of First Filing (OFF) and the second patent office is called the Office of Second Filing (OSF). As of this writing, the patent offices partnering with the U.S. are Australia, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Singapore, and the United Kingdom. According to the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent), Rospatent will join the PPH on September 1, 2010.
It is important to note that entrance of an application into the PPH is not a guarantee of allowance. Each PPH application is subject to analysis by an examiner under the patent law of the OSF, and an examiner is not obligated to rely only upon the search results and conclusions of the OFF. Furthermore, an applicant is still required to adhere to disclosure obligations as appropriate to the patent law of the OSF.
The PCT-PPH
Use of the PPH prior to the introduction of the PCT-PPH, described below, was not an attractive option for many applicants who wanted to file in several countries because one had to use the route of filing Paris Convention applications, rather than a PCT application, in order to use the PPH. The introduction of the PCT-PPH provides an easier route for applicants to pursue quick allowances in certain circumstances.
In a pilot program, the PPH has recently expanded such that an applicant receiving a favorable report on patentability regarding a PCT application having the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), or the Korean Intellectual Patent Office (KIPO) as the International Searching Authority (ISA) may request fast-tracking of a U.S., European, Japanese, and/or Korean patent application related to that PCT when that application has entered the national phase. This is referred to generally as the PCT-PPH. The recent inclusion of Korea is significant because choosing the KIPO as the ISA for PCT applications is fairly common due to its relative affordability compared to the USPTO, the EPO, and the JPO, and because of the searching competency of the KIPO. Upon receiving favorable treatment of at least one claim in, e.g., a PCT Written Opinion (ISA/USPTO, EPO, JPO, or KIPO), one may request fast-track examination of a U.S., European, Japanese, and/or Korean application related to that PCT.
“Favorable treatment” refers to issuance of a “favorable international work product” with respect to at least one claim. That is:
- a Written Opinion from an ISA (WO/ISA), where the ISA must be the USPTO, EPO, JPO, or KIPO;
- a Written Opinion from an International Preliminary Examining Authority (WO/IPEA) (IPEA must be the USPTO, EPO, JPO, or KIPO); or
- an International Preliminary Examination Report (IPER) from an IPEA (IPEA must be the USPTO, EPO, JPO, or KIPO);
must issue indicating at least one claim in the PCT application has novelty, inventive step, and industrial applicability.
When requesting fast-track examination of a U.S. application using the PCT-PPH, several requirements must be met. Details regarding these requirements are set forth at http://www.uspto.gov/patents/init_events/pph/index.jsp for each partnering country. One of the most important requirements is that substantive prosecution of the U.S. application has not begun. Also, all claims of the U.S. application must correspond, or must be amended to correspond, to the favorably treated claims. An applicant must also file a petition to make the U.S. application special, also called a “request” (this is not the same as the USPTO Accelerated Examination program). This “special” status imparts certain benefits: not only is the application advanced out of turn for examination, but applications will continue to be treated as special throughout the entire prosecution before the USPTO, including any appeals. A request need not be filed at the same time that the U.S. application is filed, and there is no USPTO fee associated with the request.
To fast-track European, Japanese, or Korean applications before the EPO, JPO, or KIPO using the PCT-PPH, one must consult the PCT-PPH rules of the EPO, JPO, and KIPO, as appropriate.
Who Should Use the PCT-PPH?
Clients having, or considering filing, a PCT application designating the USPTO, EPO, JPO, or the KIPO as the ISA who wish for expedited allowance of a related U.S. application that has not yet undergone substantive prosecution should consider utilizing the PCT-PPH. Even if a related U.S. application has begun substantive prosecution, one may file a U.S. continuation, divisional, or continuation-in-part application and request entry of that application into the PPH. Patent practitioners have reported Notices of Allowance issued from the USPTO within 2-15 days from the date of a PCT-PPH (ISA/Korea) request.
A link to a more detailed paper regarding the PPH and the PCT-PPH can be found here. If you have questions about the PCT-PPH or the PPH in general, please contact Tamara Kale or your COJK attorney.
