The term "Patent Prosecution Highway" was coined by the Patent Office to describe an international agreement whereby, under certain circumstances, an early indication of allowance of a patent application in one jurisdiction or country could be used as the basis for accelerating the prosecution of co-pending applications for the same invention in other jurisdictions. This would be more efficient for the cooperating patent offices, and provide obvious cost and time savings for applicants.
The patent prosecution highway has been open to traffic in one form or another since 2006. However, the program has evolved considerably since then, and has become much more interesting and accessible to applicants.
The basic premise of the PPH is that a favorable opinion or outcome in one patent jurisdiction can qualify corresponding applications for accelerated prosecution in other jurisdictions. However, in the original versions of the PPH, the favorable decision had to come from the "office of first filing," and the PPH was only available between certain select pairs of jurisdictions.
In 2010, the PCT-PPH program was introduced, whereby a favorable decision by a PCT "Patent Cooperation Treaty" international search authority can be used as a basis to enter the highway. The requirement for an "office of first filing" does not apply to PCT-PPH, and in fact the two applications can be connected in almost any fashion. This opened up many new opportunities for applicants, but was limited by the requirement that the favorable opinion must be from a PCT search authority that had a PCT-PPH agreement with the country for which accelerated prosecution was being sought. In addition, if the PCT opinion was not favorable, the application was not eligible for PCT-PPH, even if appropriate claim amendments could likely reverse the opinion.
Recently, the group of IP5 Offices, which is made up of the world's five largest intellectual property offices - Europe, Japan, Korea, China, and the US, entered into a joint PPH agreement whereby any favorable opinion or result ("national work product") in any of the five countries provides access to the PPH in all of the other member countries of the IP5. For these five countries, the new agreement essentially unifies the national PPH and PCT-PPH programs, in that the favorable "national work product" can be either allowance in a national prosecution or a favorable PCT search opinion. As with the original PCT-PPH, the "office of first filing" requirement does not apply, and the two applications can be connected in almost any fashion, so long as they have substantially corresponding claims, and substantive prosecution has not yet begun.
For US inventors, the largest impact of the new IP5 agreement is probably the fact that it is applicable to national decisions as well as PCT opinions. For example, if an application is allowed in the US and a corresponding application in Japan has not yet begun substantive prosecution, then PPH status can be requested in Japan even if there was no PCT application, or even if a PCT application was filed but the opinion on patentability was unfavorable. Note, however, that any claim amendments made in the US prosecution will need to be made in the corresponding Japanese case before PPH status can be granted.
Entry into the PPH can be highly desirable under many circumstances. A first substantive office action in a PPH case can usually be expected within six months, and often much sooner. Allowance rates for PPH cases are typically above 80%, as compared to about 50% for all patent applications (USPTO statistics). Typically, only one or two office actions are required for disposition, and allowance on the first action is much more common in PPH cases, as compared to non-PPH cases.
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Douglas P. Burum, PhD.
Registered Patent Agent