Patent Prosecution Highway (PPH) United States Patent and Trademark Office
Background 2006 Cross filing Applications among IP5 Offices
PPH: Fast Track Examination of Applications • What is PPH? • When claims are determined to be allowable in the Office of First Filing (OFF), a corresponding application filed in the Office of Second Filing (OSF) may be advanced out of turn. • What is the Purpose of PPH? • OSF can utilize the search and examination results of the OFF thereby avoiding duplication of work and expediting the examination process in the OSF.
What Are the Benefits of PPH? PPH Benefits for Applicant • Provides quicker patentability determination in multiple jurisdictions. • Decreases costs of prosecution.
What Are the Benefits of PPH? PPH Benefits for Offices • Avoid redundant work by reuse of OFF work product • Claims reduced in number and narrowed in focus to what was previously allowed • Reduced Pendency
PPH Requirements Claim Correspondence All claims in each U.S. application must “sufficiently correspond” to the allowable claims in the application in the OFF.
PPH Requirements (cont’d) Qualifying Applications • Current PPH Programs, generally speaking • Paris priority applications • PCT Bridge filings • Certain non-binding work product e.g. EPO’s EESR • Future PCT-PPH Pilot • PCT-PPH pilot among the Trilateral Offices • Positive international search reports, written opinions, and international preliminary examination reports
Current PPH Programs PPH Pilot to Full implementation • Japan (JPO) • Effective on January 4, 2008 • Korea (KIPO) • Effective on January 29, 2009
Current and Planned PPH Programs • JPO (full production 2008) • KIPO (full production 2009) • Australia (IPAU) • Canada (CIPO) • Denmark (DKPTO) • European Patent Office (EPO) • Finland (NBPR) • Germany (DPMA) • Singapore (IPOS) • United Kingdom (UK IPO) • Trilateral PCT-PPH (January 2010) • Rospatent (in discussions) • Hungary (in discussions) • Spain (in discussions)
Important PPH Metrics* *As of November 2009 • Average First Action (FA) Pendency from Grant of PPH Request • Non-PPH • 25 months (from filing date of application to FA) • PPH • 2-3 months (from grant of PPH request** to FA) • Overall Allowance Rate • PPH cases: 91% • Non-PPH cases: 44% • Actions per disposal • PPH cases: 1.7 • Non-PPH cases: 2.7 ** application must have completed all its pre-exam processing and is ready for examination.
Future Plans • USPTO Action Plan to enhance PPH: define target numerical goals and develop global strategy to reach those goals • Align PCT with PPH via the Trilateral pilot program • Conduct PPH awareness campaigns, internationally and domestically • Plurilateral PPH Cooperation • Streamline procedures • Share best practices and statistics • Provide users with one stop access to information
The Expanding PPH Network IP Australia ROSPATENT UKIPO Jul. 2007 DKPTO Oct. 2009 Sep. 2007 May 2009 Nov. 2008 Nov. 2009 Apr. 2008 Oct. 2009 Jul. 2008 USPTO NBPR Jul. 2009 EPO Apr. 2009 Sep. 2008 Jul. 2006 Jan 2010 APO Jan. 2008 Jan. 2008 JPO Jul. 2009 Oct. 2009 Apr. 2007 Mar. 2008 Mar. 2009 Feb. 2009 Apr. 2009 Jul. 2009 CIPO Aug. 2009 : full implementation GPTO : pilot implementation IPOS KIPO : under consideration HPO