Shortcuts on the Patent Prosecution Highway

by K&L Gates LLP
Contact

The Patent Prosecution Highway (PPH) is a program that allows applicants to leverage allowable claims in one participating office to obtain a patent faster and more efficiently for corresponding claims in another participating office [1]. For example, under PPH, an applicant with at least one claim that has been deemed allowable in a first participating office may request that a second participating office fast track the examination process for an application with corresponding claims [2]. The PPH program may be used for claims that are deemed allowable in either a national application or a Patent Cooperation Treaty (PCT) application [3].

New PPH Pilot Programs
In January 2014, the United States Patent and Trademark Office (USPTO) launched two pilot programs that are intended to simplify the PPH program: (1) IP5 PPH; and (2) Global PPH [4]. Before these pilots, there were bilateral PPH agreements between different intellectual property offices. However, because the bilateral agreements were not uniform, different PPH programs had different forms and different submission requirements, thus requiring attorneys to spend time reviewing the various procedures for each program to ensure compliance [5]. The IP5 PPH program will run for a period of three years, ending on January 5, 2017. However, the Global PPH program will only run for a period of one year, ending on January 5, 2015 [6].

The IP5 and Global PPH pilots attempt to harmonize the PPH program by replacing the bilateral PPH agreements with a single set of procedures [7]. According to the USPTO, the two pilot programs are “substantially identical” and differ only in the respective participating offices [8]. Furthermore, because the USPTO has elected to participate in both pilot programs and the requirements for the two programs are equivalent, a single PPH request form may be filed in the USPTO based on allowed claims in any of the following participating offices, without specifying which pilot program is being utilized [9]:

  1. State Intellectual Property Office of the People’s Republic of China (IP5 PPH)
  2. European Patent Office (IP5 PPH)
  3. Japan Patent Office (IP5 PPH)
  4. Korean Intellectual Property Office (IP5 PPH)
  5. IP Australia (Global PPH)
  6. Canadian Intellectual Property Office (Global PPH)
  7. Danish Patent and Trademark Office (Global PPH)
  8. National Board of Patents and Registration of Finland (Global PPH)
  9. Hungarian Intellectual Property Office (Global PPH)
  10. Icelandic Patent Office (Global PPH)
  11. Israeli Patent Office (Global PPH)
  12. Nordic Patent Institute (Global PPH)
  13. Norwegian Industrial Property Office (Global PPH)
  14. Portuguese Institute of Industrial Property (Global PPH)
  15. Russian Federal Service for Intellectual Property (Global PPH)
  16. Spanish Patent and Trademark Office (Global PPH)
  17. Swedish Patent and Registration Office (Global PPH)
  18. United Kingdom Intellectual Property Office (Global PPH)

However, for countries that are not participants in the IP5 or Global PPH pilots, the existing bilateral PPH agreements with the USPTO will remain in place [10]. Therefore, applicants who wish to request PPH in the USPTO based on allowed claims in any of the following intellectual property offices may do so using the forms and requirements under the existing PPH agreements: Austria, Colombia, Czech Republic, Germany, Mexico, Nicaragua, Philippines, Singapore, and Taiwan [11].

Benefits of Requesting Examination under the PPH Pilot Programs
The USPTO no longer requires a fee for an application to be accepted into the PPH program, so applicants can expedite examination at no cost9.  Prosecution under the PPH program in the USPTO has also been proven on average to take significantly less time than for non-PPH applications [12]. In addition, statistics from the PPH portal site indicate that the rate of applications allowed in a first action and the overall rate of patents granted is higher under the PPH program [13]. Therefore, participation in the PPH program can result in faster allowance for a given application and lower attorney fees for prosecuting the application.

Requirements for Participation in the PPH Program
In order to qualify for participation in the PPH program in any participating office under either of the pilots, the following requirements must be met [14]:

  1. The applications at the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) (i.e., the USPTO) must have the same earliest date, which can be either the filing date or the priority date [15].
  2. The OEE must have found at least one claim allowable, or if based on a PCT work product, the PCT work product must have indicated that at least one claim has novelty, inventive step, and industrial applicability.
  3. All claims presented under the PPH program must sufficiently correspond to one or more of the allowable claims.
  4. The OLE has not started substantive examination of the application

“Sufficiently Correspond”
One of the key issues for most applicants is trying to determine what “sufficiently correspond” means and, thus, what claims can be presented under the PPH program. Aside from formatting differences between participating offices, claims must be of the same or similar scope [16]. Claims that are narrower in scope may be presented in the OLE if they are supported in the specification [17]. Although most participating offices do not require narrower claims to be in dependent form, the USPTO requires that narrower claims be presented in dependent form only [18]. As a result, the independent claims in the USPTO must be essentially identical to the allowed claims in the OEE [19]. However, the narrower limitation may be added into the independent claim during prosecution if the USPTO determines that the dependent claim would be allowable if not dependent on a rejected base claim [20].

Applicants cannot present a new “category” of claims in the OLE that was not present in the OEE. For example, if the claims in the OEE were directed to a process of manufacturing a product, the applicant cannot add new claims in the OLE directed to a product that corresponds to the process claims [21]

Applying and Prosecuting Applications under the PPH Program at the USPTO
The USPTO provides a single form to request participation in either of the new pilot programs: http://www.uspto.gov/forms/sb0020glbl.pdf. As discussed previously, this form may be used to request entry into the new PPH program at the USPTO based on allowable claims in any of the offices participating in either pilot program.
As noted in the form, the following documents are required in addition to the request itself:

  1. A copy of the most recent office action prior to the decision to grant the patent or the most recent PCT work product. This is not required if the OEE issued the patent on the first office action. The applicant may select the option of having the USPTO access the latest office action via the Dossier Access System or World Intellectual Property Organization’s PATENTSCOPE System, but if the actions are not available on either system, the applicant will be notified by the USPTO and must then submit a copy of the office action or work product [22]
  2. An English language translation if the most recent office action or PCT work product is not written in English. However, a verification statement for the translation is no longer required [23].
  3. An Information Disclosure Statement listing the documents cited in the OEE work product
  4. Copies of any documents cited by the OEE that are not US patent or US patent publications

In addition to the required documentation, applicants must fill out a Claims Correspondence Table in the request form. The correspondence table requires applicants to: (1) list which claims in the current application correspond to allowable claims in the OLE; and (2) provide an explanation of the correspondence for each claim.

Finally, the attorney submitting the request must sign a statement at the end of the form stating that “All the claims in the U.S. application sufficiently correspond to the patentable/allowable claims in the OEE application.”

If an applicant files the afore-mentioned request and accompanying documentation and is denied participation in the PPH program, applicant will have one chance to correct any mistakes. If the applicant fails to correct the mistakes, the application will be examined in normal turn.

Questions about the PPH Pilot Programs
The USPTO has a phone number (571-272-4100) and email address for questions regarding the PPH pilots [24]. However, in our experience, the USPTO has been more responsive to email requests. Thus, we recommend emailing PPHfeedback@USPTO.GOV with any questions about the PPH pilots and compliance therewith.

Conclusion
Due to the very recent launch of the PPH pilot programs, it is unclear whether or to what degree the new pilots will streamline the PPH program.  For example, the USPTO has still not set forth a precise definition for “sufficiently correspond.” However, the universal request form and minimal required accompanying documentation seem to be a step in the right direction. Therefore, the new PPH program in the USPTO appears to be a desirable option for applicants who have allowable claims in participating offices. 

Please note that, while the focus of this client alert is on the PPH program at the USPTO, expedited examination under the PPH program is available in other participating offices and is subject to the requirements for that particular office [25]. For example, an applicant who has received allowable claims in the USPTO may want to seek accelerated examination under the PPH program in the Japan Patent Office (JPO) or the European Patent Office (EPO).

Notes:
[1] USPTO Patent Prosecution Highway webpage, available at http://www.uspto.gov/patents/init_events/pph/, ¶¶ 1-2.

[2] Id. at ¶ 2.

[3] Id. at ¶ 7.

[4] Id. at ¶ 5.

[5] Compare e.g., http://www.uspto.gov/forms/sb0020pct-jp.pdf (the old USPTO form to enter the PCT-PPH program between the JPO and USPTO required an accuracy statement for the English translation) with http://www.uspto.gov/forms/sb0020jp.pdf (the old USPTO form to enter the PPH program between the JPO and USPTO did not require the accuracy statement for the English translation).

[6] “Implementation of the Global and IPS Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices,” available at http://www.uspto.gov/patents/law/notices/global-ip5.pdf, Section II.

[7] USPTO Patent Prosecution Highway webpage, available at http://www.uspto.gov/patents/init_events/pph/, ¶¶ 5-6.

[8] Id. at ¶ 6.

[9] Id.

[10] USPTO Patent Prosecution Highway webpage, available at http://www.uspto.gov/patents/init_events/pph/, ¶ 8 (“Other Patent Prosecution Highway Programs”).

[11] Id.

[12] Patent Prosecution Highway Portal Site, available at http://www.jpo.go.jp/ppph-portal/statistics.htm:

Statistics from Jul 2013 - Dec 2013 in the USPTO

PPH Applications only

All Applications (PPH and non-PPH)

Granted Patents

87.9%

53%

First Action Allowance

27.1%

17.3%

Average Pendency to 1st Office Action

4.4 months

18 months

Average Pendency to Final Decision

14 months

29 months

[13] Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices, available at http://www.uspto.gov/patents/law/notices/global-ip5.pdf, p. 2, § III(A).

[14] Id. at § III(A)(3).

[15] The previous requirement that the OEE also be the office of first filing was eliminated under the MOTTAINAI program. See “Implementation of the Global and IPS Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices,” available at http://www.uspto.gov/patents/law/notices/global-ip5.pdf, Background, ¶ 2).

[16] Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices, available at http://www.uspto.gov/patents/law/notices/global-ip5.pdf, p. 2, § III(A)(3).

[17] Id.

[18] The EPO, JPO, and Canadian Intellectual Property Office (CIPO) do not state that the narrower claims must be in dependent form. See “Patent Prosecution Highway pilot programme between the IP5 Offices based on PCT and national work products,” available at http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20131218.html, II.B.(3); “Examination Activities and Appeal Examination Activities: Patent Prosecution Highway,” available at http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/patent_highway_e.htm, (See .pdfs under the “How to make a request” link); “Framework Provisions for the Global Patent Prosecution Highway System,” available at http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03742.html#annexd, Annex D; Email dated February 19, 2014 from PPHfeedback@USPTO.GOV stating that “Narrower claims must be in dependent form.”

[19] “The Patent Prosecution Highway at the USPTO,” Presentation by Charles Eloshway, Senior Patent Counsel for the Office , available at http://www.jpo.go.jp/ppph-portal/events/PPH%20at%20the%20USPTO,%20Mr.%20Charles%20Eloshway.pdf, p. 10.

[20] USPTO PPH FAQs, available at http://www.uspto.gov/patents/init_events/pph/pph_faqs.pdf, p. 12, § 8(c), Q1 and A1 (revised).

[21] “The Patent Prosecution Highway at the USPTO,” Presentation by Charles Eloshway, Senior Patent Counsel for the Office, available at http://www.jpo.go.jp/ppph-portal/events/PPH%20at%20the%20USPTO,%20Mr.%20Charles%20Eloshway.pdf, p. 10.

[22] Email dated January 28, 2014 from PPHfeedback@USPTO.GOV stating that “You may request that the USPTO utilize the Dossier system to access the document, however, not al documents are available in the Dossier system.  If the document is not available the USPTO will ask that you provide it.”

[23] Compare, e.g. http://www.uspto.gov/forms/sb0020pct-jp.pdf (the old USPTO form to enter the PCT-PPH program between the JPO and USPTO required an accuracy statement for the English translation) with http://www.uspto.gov/forms/sb0020glbl.pdf (the new USPTO form to enter the Global/IP5 PPH program does not require the accuracy statement for the English translation).

[24] USPTO Patent Prosecution Highway webpage, available at http://www.uspto.gov/patents/init_events/pph/, ¶¶ 9-10.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© K&L Gates LLP | Attorney Advertising

Written by:

K&L Gates LLP
Contact
more
less

K&L Gates LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.