Global Patent Prosecution - May 2019: Strategic Use of the Patent Prosecution Highway

Sterne, Kessler, Goldstein & Fox P.L.L.C.

At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for corresponding applications filed in participating intellectual property offices, it is a very attractive mechanism for accelerating examination of applications.

Strategies regarding the PPH need to be considered early on during prosecution. For example, identification of eligible pairs of applications must be considered at the outset to avoid or mitigate issues relating to priority relationship between the applications, claim scope, and timing to take advantage of the PPH programs.

While typically a speedy process, the PPH is not without its potential pitfalls. For example, while an applicant may have an understanding of potential prior art issues raised in the earlier examination, it does not preclude a U.S. examiner from identifying additional prior art that was not considered by the earlier Office. And if new art objections are raised, the art must be addressed by way of argument or amendment of the claims.

In many cases, it is the process of amendment that poses difficulty for applicants. If minor claim amendments are necessary, there is generally not a problem with ensuring that the claims sufficiently correspond to the earlier examined claims. The issues occur when more substantial edits, usually narrowing amendments, are required because the PPH amendment process does not always allow for the same type of amendment practice during typical patent prosecution. These issues arise because of the requirement that sufficient claim correspondence must be maintained not only at the time of PPH entry, but also when amending claims during prosecution of the U.S. application.

Introducing the limitations of a dependent claim into (typically) an independent claim is generally looked at favorably by the USPTO as long as the dependent claim was favorably treated by the earlier examination office. Incorporation of a limitation from the specification is typically problematic because the claims may not sufficiently correspond to the earlier examined claims. This is especially true if the added subject matter was not the subject of an earlier examined claim. So while the amended claim may be narrower, if the claims do not sufficiently correspond the amendment is non-compliant. And, unfortunately, the recourse for a non-compliant amendment is to file a continuation application, which then defeats the entire purpose of the PPH.

One way to avoid correspondence issues is by proactively introducing additional dependent claims into the U.S. PPH application prior to substantive examination. These added claims maintain sufficient claim correspondence by depending from a favorably reviewed claim. Once introduced by preliminary amendment, these claims can then be used to address any additional rejections raised by the USPTO.

The PPH program offers a great deal of benefits to applicants. By implementing a strategic use of PPH, applicants can take advantage of accelerated patent grant and the corresponding cost savings of prosecution, as well as significantly higher allowance rates compared to typical patent prosecution.

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.

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