Traveling the Highways of Patent Prosecution
Patent
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
The PPH began as a pilot program between
the United States Patent Office (USPTO) and the Japan Patent Office (JPO), in
2006. In
The
Japan Patent Office currently has PCT-PPH agreements with:
Austrian Patent Office (AT)
State Intellectual Property Office of
the People’s Republic of
European Patent Office (EP)
Spanish Patent and Trademark Office (ES)
Finnish Patent and Registration Office
(PRH) (FI)
Korean Intellectual Property Office (KR)
Federal Service for Intellectual
Property, Patents and Trademarks (Russian
Federation) (RU)
Swedish Patent and Registration Office
(SE)
Nordic Patent Institute (XN)
Link
to forms for JPO and its partners
(http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/patent_highway_e.htm)
The
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.
Global
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
following offices are involved in the Global PPH (GPPH) pilot:
IP
Australia (IP Australia)
Austrian
Patent Office (
Canadian
Intellectual Property Office (CIPO)
Danish
Patent and Trademark Office (DKPTO)
Finnish
Patent and Registration Office (PRH)
Hungarian
Intellectual Property Office (HIPO)
Icelandic
Patent Office (IPO)
Japan
Patent Office (JPO)
Korean
Intellectual Property Office (KIPO)
Nordic
Patent Institute (NPI)
Norwegian
Industrial Property Office (NIPO)
Portuguese
Institute of Industrial Property (INPI)
Russian
Federal Service for Intellectual Property (ROSPATENT)
Intellectual
Property Office of
Spanish
Patent and Trademark Office (SPTO)
Swedish
Patent and Registration Office (PRV)
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
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.
GPPH – Important Points
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 Chinese Patent
Office (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
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.