The Patent Prosecution Highway (PPH) is an ingenious tool for applicants from outside the United States to obtain patent protection more reliably and more quickly. Created in 2006 as an initiative between the United States and Japan, the program has grown to include more than 30 countries worldwide. The program was originally only available to applicants pursuing PCT applications, but in recent years the program has been expanded to include a number of countries that are not PCT members including Taiwan.
The PPH provides a process that is supposed to (1) reduce the USPTO’s backlog of unexamined patent applications and (2) promote uniformity in patentability decisions between patent offices in different countries. The PPH allows an applicant with a pending application in a first country to expedite prosecution in a second country after the patent office in the first country determines that one or more of the claims in the application are allowable. The applicant then identifies those claims in the application pending in the second country. This allows the patent examiner in the second country to take advantage of the work performed in the first country. Of course, the applicant is only pursuing protection for those claims that were considered allowable by the patent office in the first country leading to a narrower patent. This problem can usually be mitigated by filing a divisional application at the same time as the request to participate in the PPH.
The advantages of utilizing this procedure are relatively obvious once one takes a look at the statistics. More specifically, the allowance rate for applications accepted to the PPH program are much higher than average (86% versus 53% for applications as a whole). In addition, patent examiners are instructed to fast track these applications, i.e. give them priority when examining them. As a result the average prosecution time for these applications is significantly reduced (from over 30 months to around 11 or 12 months according to some sources).
Not every application is eligible for participation in the program. For example, there are several types of applications that are not examined under the PPH program including provisional and design patent applications. In addition, a request to participate in the PPH must be filed in the U.S. before the examiner starts examining the application – so timing is very important.
With the fees associated with this program being eliminated a few years ago, the Patent Prosecution Highway represents the cheapest means of expediting patent examination in the United States. It is also a way for a foreign applicant to increase the chances of a patent being issued. Consult with a qualified professional to discuss your individual needs.
Russell D. Nugent is an intellectual property attorney based out of Wilmington, New Hanover County, North Carolina. Licensed since 2004, he focuses his practice on patent and trademark prosecution and trade secret litigation.