Traveling the Highways of Patent Prosecution
Patent Prosecution Highway
The Patent
Prosecution Highway (PPH) is designed to accelerate the examination process for
applications filed in participating intellectual property offices.
The PPH is an
agreement between participating patent offices that when a first patent office
deems that an application has at least one patentable claim; the
applicant may request a fast track examination of the corresponding claim(s) in
a corresponding patent application pending at a second patent office. The PPH
allows a final disposition of a patent application to be achieved more quickly
and efficiently than through the standard examination process.
There are no
additional fees under the PPH program.
PPH in Japan
The PPH began as
a pilot program between the United States Patent Office (USPTO) and the Japan
Patent Office (JPO), in 2006. In Japan, approximately 75% of PPH applications
are granted (69% worldwide average), and the processing time is much faster
than the worldwide average (7 months in Japan vs. 25 months worldwide).
However, some PPH applications to the JPO have received a large number of
office actions although the claims had been previously granted in another
patent office.
The Patent
Prosecution Highway allows for an application having at least one claim which
has been deemed to be patentable by an Office of First Filing (OFF) to undergo
an accelerated examination in an Office of Second Filing (OSF) based on
bilateral office agreements. Through the
PPH, an applicant may acquire patent rights at an early stage worldwide and the
utilization of search and examination results between IP Offices is enhanced in
order to reduce the burden of examination and to improve the quality of
examination worldwide.
The JPO has
commenced a pilot PPH program using the PCT international work products
(PCT-PPH). Under this program, an accelerated examination can be requested
using the written opinion established by certain International Searching
Authorities (WO/ISA), a written opinion established by certain International
Preliminary Examining Authorities (WO/IPEA), or an international preliminary
examination report (IPER) established by certain International Preliminary
Examining Authorities.
Example of PPH Requirements and Procedures
A. Required Documents
1. Claims
Correspondence Table
2. Copy of all claims
and translations thereof
3. Copy of any OFF
Office Actions (OA) and translations thereof
4. Copies of all
documents cited in the OFF Office Actions
In some cases, it is
only necessary to submit the Claims Correspondence Table. Please consult the
guidelines of each office.
B. Basic Requirements
1. The OSF application
must have a relationship with the OFF application. (For example, the OSF
application validly claims priority under the Paris Convention to the OFF
application)
2. The OFF application
must have at least one claim that was determined by the OFF (or a WO/ISA,
WO/IPEA, or IPER) to be patentable.
3. The claim(s) in the
OSF application must sufficiently correspond to a claim(s) that was (were)
determined by the OFF (or a WO/ISA, WO/IPEA, or IPER) to be patentable.
4. The examination must
not have commenced at the OSF. (Some offices do not adhere to this requirement.
Please consult the guidelines of each office.)
C. Patent Prosecution Highway Petition Fees
Generally free. Please
consult the guidelines of each office.
PPH MOTTAINAI
While requests for PPH
have been increasing in recent years, the number of requests is still relatively
low compared to the total number of patent applications being filed in the
world.
According to the
current PPH scheme, before another office can accept a PPH request, the Office
of First Filing (OFF) must provide its examination results. This requirement
delays PPH requests and the results of examinations conducted at one office
cannot be fully utilized at subsequent offices, as the OFF has not always
finished conducting their examination before the OSF can start performing their
examination. The Japanese word “MOTTAINAI” means “wasteful” and clearly applies
to this situation.
Therefore, eight
offices agreed to launch a revised PPH, called the PPH MOTTAINAI Pilot, which
enables applicants to make PPH requests at the Office of Later Examination (OLE)
by using the examination results of the Office of Earlier Examination (OEE),
provided that the OEE and OLE have a PPH MOTTAINAI agreement.
Case 1: OFF (Office A) receives examination results from OSF
(Office B).
Case 2: OFF is an office other than Office A or Office B.
The PPH MOTTAINAI pilot
was extended indefinitely in most bilateral PPH after July 15, 2012. Please
refer to each office's website and PPH guidelines for further details. As the
PPH MOTTAINAI pilot has been implemented through separate bilateral
arrangements in place among the participating offices, each bilateral
arrangement may be different from other agreements, as decided by the two
participating offices. All other PPH arrangements in effect throughout the
network of participating offices remain unaffected by the PPH MOTTAINAI pilot
program.
For more information
regarding specific bilateral arrangements, please visit the homepage of each
office.
|
Country/Organization |
PPH |
Mottainai |
PCT-PPH |
|
United States (USPTO) |
Y |
Y |
Y |
|
European Patent Office (EPO) |
Y |
Y |
Y |
|
China Patent Office (CNIPA) |
Y |
Y |
Y |
|
Korean Patent Office (KIPO) |
Y |
Y |
Y |
|
Intellectual Property Office of Singapore (IPOS) |
Y |
Y |
Y |
|
Israel Patent Office (ILPO) |
Y |
Y |
Y |
|
Intellectual Property Office of the Philippines (IPOPHL) |
Y |
Y |
Y |
|
Department of Intellectual Property in Malaysia (MyIPO) |
Y |
Y |
Y |
|
Directorate General of Intellectual Property Rights (DGIP) |
Y |
Y |
|
|
Taiwan Intellectual Property Office
(TIPO) |
Y |
Y |
|
|
Department of Intellectual Property in Thailand (DIP) |
Y |
||
|
Intellectual Property Office of Viet Nam (IP Viet Nam) |
Y |
||
|
India Office of the Controller General
of Patents, Designs & Trade Marks (CGPDTM) |
Y* |
||
|
Egyptian Patent Office (EGYPO) |
Y |
Y |
Y |
|
UK-IPO |
Y |
Y |
Y |
|
German Patent and Trade Mark Office (DPMA) |
Y |
Y |
Y |
|
Danish Patent and Trademark Office (DKPTO) |
Y |
Y |
Y |
|
Finnish Patent and Registration Office (PRH) |
Y |
Y |
Y |
|
Federal Service for Intellectual Property, Patents & Trademarks
of Russia (ROSPATENT) |
Y |
Y |
Y |
|
Austrian Patent Office (APO) |
Y |
Y |
Y |
|
Hungarian Patent Office (HIPO) |
Y |
Y |
Y |
|
Spanish Patent and Trademark Office (SPTO) |
Y |
Y |
Y |
|
Swedish Patent and Registration Office (PRV) |
Y |
Y |
Y |
|
Norwegian Industrial Property Office (NIPO) |
Y |
Y |
Y |
|
Icelandic Patent Office (IPO) |
Y |
Y |
Y |
|
Portuguese Institute of Industrial Property (INPI) |
Y |
Y |
Y |
|
Polish Patent Office (PPO) |
Y |
Y |
Y |
|
Eurasian Patent Organization (EAPO) |
Y |
Y |
Y |
|
Industrial Property Office of the Czech Republic (IPO CZ) |
Y |
Y |
Y |
|
State Office for Inventions and Trademarks of Romania (OSIM) |
Y |
Y |
Y |
|
Estonian Patent Office (EPA) |
Y |
Y |
Y |
|
Turkish Patent and Trademark Office (TURKPATENT) |
Y |
Y |
Y |
|
Nordic Patent Institute (NPI) |
Y |
||
|
Visegrad Patent Institute
(VPI) |
Y |
||
|
Saudi Authority for Intellectual Property (SAIP) |
Y |
||
|
Canadian Intellectual Property Office (CIPO) |
Y |
Y |
Y |
|
Mexican Institute of Industrial Property (IMPI) |
Y |
Y |
Y |
|
Superintendence of Industry and Commerce of the Republic of Colombia (SIC) |
Y |
Y |
Y |
|
National Institute of Industrial Property of Chile (INAPI) |
Y |
Y |
Y |
|
National Institute for the Defense of Free Competition and the
Protection of Intellectual Property of Peru (INDECOPI) |
Y |
Y |
Y |
|
National Institute of Industrial Property of Brazil (INPI) |
Y |
Y |
|
|
National Institute of Industrial Property of Argentina (INPI) |
Y |
Y |
|
|
IP Australia |
Y |
Y |
Y |
|
Intellectual Property Office of New Zealand (IPONZ) |
Y |
Y |
Y |
Table 1: Countries with which Japan has at least one PPH agreement
Link
to forms and further information for countries participating in any PPH program
with the JPO:
(https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/)
Global Patent Prosecution Highway
The Global Patent Prosecution
Highway (GPPH) pilot was launched on January 6, 2014 with the aim of further
simplifying the requirements of the PPH in participating offices. The GPPH and
the IP5 PPH (discussed later) programs have essentially replaced existing PPH
programs in participating offices.
The GPPH pilot allows
patent applicants to request an accelerated examination at any of the offices
involved in the pilot if the claim(s) has (have) been found to be acceptable by
at least one of the other patent offices involved in the pilot.
The pilot is intended
to simplify and improve the existing PPH network so that it is easier for users
to access.
Framework Provisions for the Global Patent Prosecution Highway System
The
participating offices will evaluate and exchange information on the
effectiveness of the GPPH pilot, and modifications to the GPPH pilot may be
made based on the results.
New patent
offices are eligible to join the GPPH pilot on January 6th or
July 6th. Additionally, offices participating in the pilot may limit
or terminate their participation in the GPPH pilot at any time by providing
written notice at least one month prior to the date of withdrawal.
Under the GPPH pilot, a request for an
accelerated examination can be made at any participating office, from any one
of the other participating offices with the proviso that the following
eligibility criteria (see “Eligibility Requirements” section below) are met.
The participating
offices may, upon their discretion, develop office-specific guidelines based on
their legal terminologies and processes, and may expand the Eligibility
Requirements as they see fit. The Eligibility Requirements are designed to be a
standard to be adhered to by offices participating in the GPPH pilot so as to establish
a uniform system for applicants. Essentially, if the GPPH pilot specific
requirements below are satisfied, the application qualifies for PPH treatment.
Should two
participating offices have a bi-lateral PPH arrangement; the guidelines of the
Global PPH pilot will take precedence over those of the bi-lateral arrangement
for the duration of the pilot.
Eligibility Requirements
Accelerated processing
under the GPPH pilot may be undertaken for applications where the following
requirements have been satisfied:
A) An application before an Office of Earlier Examination (OEE)
and an Office of Later Examination (OLE) has the same priority date or filing
date.
B) The OEE deems and indicates in an explicit statement in any
substantive work product that an application has at least one
patentable claim.
C) The claim(s) presented for examination under the GPPH pilot
must sufficiently correspond to one or more of the claims found to be
patentable by the OEE.
D) The OLE has not begun a substantive examination of the
application.
E) A request for substantive examination must have been filed at
the OLE, at any time up until the GPPH request is made.
Provisions for Participating Offices
Participating Offices
may require that the OLE application is open to the public and may require the
applicant to pay a fee for GPPH acceleration due to their respective legal
requirements for accelerated processing.
For an OEE application
to be valid as the basis for a GPPH pilot request, it must have been
substantively examined, including the consideration of novelty and inventive
step, by an OEE participating in the GPPH pilot.
Support documentation required for GPPH request
Participating offices
will require the following documentation to support a request for acceleration
under the GPPH pilot:
1) GPPH request form.
2) Copy of the work product(s) which are relevant to the
allowability/patentability of the claim(s) of the corresponding OEE
application, if not available via Dossier Access Systems.
3) Copy of the claims(s) which the OEE deemed to be
allowable/patentable, if not available via Dossier Access Systems.
Participating Offices
may also require the applicant to provide the following documentation:
1) Copies of citations in any Office Actions (OA) raised against
the OEE application which are not available to the OLE via their regular
databases or search files.
2) Translations of any of the support documentation listed above.
3) A claim correspondence table indicating the relationship
between the claims of the OLE application and those of the OEE application that
are deemed to be allowable/patentable.
If the participating
office has difficulty in obtaining documents through the Dossier Access Systems
and translations thereof, the applicant may be asked to submit such documents.
The applicant may be required to submit manual translations of such documents
owing to the poor quality of machine translations.
Consideration of a GPPH request
The OLE will handle all
requests for accelerated examination under the GPPH. Should a request be found
to be deficient, the OLE will inform the applicant of the deficiencies and the
applicant will be provided with at least one opportunity to correct the
application within a reasonable time limit.
IP5 PPH
The IP5 PPH Patent
Prosecution Highway (IP5 PPH) pilot program was initiated on January 6, 2014
and is scheduled to run for a period of three years. This program involves the
five largest patent offices: U.S. Patent and Trademark Office (USPTO), the
Japanese Patent Office (JPO), the Korean Patent Office (KIPO), the China
National Intellectual Property Administration (CNIPA, formerly known as
“SIPO”), and the European Patent Office (EPO). The IP5 pilot program was
designed to further harmonize and improve the PPH process among these five
patent offices, which handle over 90% of the patent workload worldwide.
Under this pilot
program, a PPH request can be based on the latest PCT work product (written
opinion of the ISA (WO-ISA) or international preliminary examination report
(IPER)) prepared by one of the IP5 Offices as an ISA or IPEA, or on the
national work product prepared during the processing of a national application
or a PCT application that has entered the national phase at one of the IP5
offices. It has been deemed from the work product that at least one claim is
patentable/allowable.
As with the PPH and
GPPH, fast-track patent examination procedures already available at the offices
may be employed to allow applicants to obtain corresponding patents faster and
more efficiently. The IP5 PPH also allows each office to access and use the
work previously performed and/or obtained by another office.
Differences between the Global PPH and the IP5 PPH?
In general, the
requirements of the two programs are identical. Only the offices
participating in the Global PPH and the IP5 PPH are different.
The USPTO, the JPO, and
the KIPO are currently the only three patent offices that are members of both
the Global PPH and the IP5 PPH programs.
As the USPTO, the JPO,
and the KIPO participate in both programs, a USPTO, a JPO, or a KIPO applicant
may participate in the PPH based on the work product of any patent office that
is a member of either the Global PPH or the IP5 PPH. In this case, only a
single Global PPH/IP5 form is used, and the applicant is not required to state
under which pilot program the request is being made.
Merits of Requesting GPPH or IP5 PPH
A) Accelerated
Examination
1) Average
pendency until First Office Action is 2 (two) months, which is more than 6
(six) times faster than for all applications (PPH and non-PPH) at the JPO.
2) Average
pendency until Final Decision is approximately 7 (seven) months, which is
approximately 3 (three) times faster than for all applications (PPH and
non-PPH) at the JPO.
B) Decreased
Number of Office Actions
1) The
number of Office Actions issued to applications for which PPH was requested is
10% less than for all applications (PPH and non-PPH) at the JPO.
- Fewer Office
Actions reduces the costs to the applicant.
C) Increase
in Grant Rate
1) While
not as high as the grants rates for the United States, the Russian Federation, Mexico,
Great Britain, etc., the grant rate for applications for which PPH was
requested is about 4% higher than for all applications (PPH and non-PPH) at the
JPO.
As the
Office of Earlier Examination already deemed the claim(s) to be patentable, PPH
applications tend to be granted faster, with fewer Office Actions, and at a
higher rate. Together, the GPPH and the IP5 PPH programs eliminate the
confusion generated by the use of different systems (PPH, PPH MOTTAINAI, and
the PCT-PPH) between offices.
From 2012-2017, the
number of PPH application requests worldwide have surged from 13,517 to 30,641.
Much of this may be attributed to the number of bilateral PPH agreements, pilot
projects, and a general push by patent offices worldwide to disseminate
information regarding the existence and the merits of the PPH systems. In
Japan, Canada, the US, and Korea, PPH applications obviously showed faster FA
pendency than applications prosecuted through the normal application processes
at each country’s patent office, the patent grant rates and, in particular, the
patent grant rates in the first actions issued by the respective patent offices
were all higher than for applications prosecuted through the normal application
processes at each country’s patent office.
|
July – December 2019 |
All Applications |
National PPH |
PCT PPH |
|
Patent Grant (%) |
75 |
81 |
92.7 |
|
First Action Allowance (months) |
14.2 |
19.8 |
43.4 |
|
Pendency PPH request to First
Action(months) |
9.4 |
2.6 |
2.8 |
|
Pendency PPH request to Final
Decision (months) |
14.3 |
7.3 |
5.3 |
|
Number of Office Actions |
1 |
1 |
0.7 |
Table 2: Patent Prosecution High Requests and
Examination Results.
For the 6-month period from July 2019 until
December 2019, comparative data regarding national phase PPH applications,
PTC-PPH applications, and all applications submitted to the Japan Patent Office