What is PPH?
PPH stands for Patent Prosecution Highway, a cooperative program between the USPTO and participating foreign patent offices to expedite the allowance of utility patent applications that previously received favorable rulings. In order to take advantage of this program, the US utility patent application must have a counterpart application with the same claims and those claims must have received a favorable opinion.
Two key acronyms are helpful here: OEE refers to the Office of Earlier Examination and OLE refers to the Office of Later Examination.
How to speed up US patent application
An applicant can take advantage of a favorable prior opinion issued on the same claims filed with the USPTO by filing a PPH request prior to the commencement of substantive examination of the US application. Keep in mind that US patent examiners will still conduct their own examinations which might not agree with earlier favorable opinions.
1) A PPH Petition to Make Special filed before substantive examination of the U.S. application begins;
2) All claims in the later application must sufficiently correspond to the allowable claims in the earlier application which received the favorable ruling from a partnering office. An explanation of the correlation between the claims must be provided; and
3) Prosecution history documents (e.g., Office Actions, Search Reports, Notices of Allowances, etc.) in the earlier application must be submitted, including:
- Type of OEE Office Action (e.g., Notice of Allowance, Decision to Grant, etc.) and the mailing date
- Copy of OEE Office Action wherein the claims were allowed and its English translation
- English translation of any allowed claims in a foreign language
- Copies of any foreign patents and/or non-patent literature cited in the OEE official action
A decision is usually rendered within 2 months of the filing date of the request. If granted, the USPTO examiner will examine the application within 2 to 5 months from the grant decision.
Global PPH refers to a program covering a larger number of participating patent offices than IP5 PPH which covers only Japan (JPO), Korea (KIPO), U.S. (USPTO), European Patent Office (EPO) and China (SIPO).
Timing of PPH Request
The PPH request must be filed before substantive examination has begun. For example, a Notice to File Missing Parts would not constitute substantive examination. Even the issuance of a Restriction Requirement might not disqualify an application from PPH so long as the examiner has not started working on the first action on the merits.
What if you want to pursue broader claims that were not allowable in the earlier application?
If a PPH request is filed in the later (OLE) application, all claims in the OLE application must sufficiently correspond to the patentable/allowable claims in the earlier (OEE) application. Therefore, broader claims or claims of different scope than the previously allowed claims cannot be added or left in the application. However, an applicant can add dependent claims which are inherently narrower in scope. See: http://www.uspto.gov/patents/law/notices/global-ip5.pdf
For example, suppose you received an ISR/WO in your PCT application indicating that independent claim 1 was not allowable, but that dependent claim 2 was allowable (i.e., satisfied requirements of novelty, inventive step and industrial applicability). In order to request PPH in the later US application, you must amend the independent claim to incorporate the limitations of dependent claim 2.
Of course, an applicant can always file a continuation application to pursue claims that would not be eligible for the program.
Is PPH available for US national stage applications?
If a favorable search report was issued in a PCT application, could that favorable opinion be used as the basis for a PPH request in a national stage application filed with the USPTO? The answer depends upon the which country of the International Search Authority (ISA) designated in the PCT application. If the ISA is in one of the following participating countries from the Global PPH and IP5 PPH pilot programs, then such a prior favorable opinion may be used to request PPH in the US:
- S. Korea
- New Zealand
- United Kingdom
How to speed up foreign patent applications
If a favorable Office Action was granted in a counterpart US application, an applicant may want to use the favorable decision by the USPTO to advance the same claims in foreign patent offices. Such a strategy can significantly streamline foreign patent prosecution by shortening the prosecution time and reducing legal costs.
PPH Participating Countries
The USPTO has PPH agreements with the following foreign IP offices:
- Argentina (INPI-Argentina) (bilateral agreement)
- Australia (IPAU)
- Austria (APO)
- Brazil (INPI) (bilateral agreement)
- Canada (CIPO)
- China (SIPO)
- Colombia (SIC)
- Czech Republic (IPOCZ) (bilateral agreement)
- Denmark (DKPTO)
- Europe (EPO)
- Estonia (EPA)
- Finland (NBPR)
- Germany (DPMA)
- Hungary (HPO)
- Iceland (IPO)
- Israel (ILPO)
- Japan (JPO)
- Mexico (IMPI) ((bilateral agreement)
- Nicaragua (NRIP) (bilateral agreement)
- New Zealand (IPONZ)
- Nordic (NPI)
- Norway (NIPO)
- Philippines (IPOPH) (bilateral agreement)
- Poland (PPO)
- Portugal (INPI)
- Romania (OSIM) (bilateral agreement)
- Russia (ROSPATENT)
- S. Korea (KIPO)
- Singapore (IPOS)
- Spain (SPTO)
- Sweden (PRV)
- Taiwan (TIPO) (bilateral agreement)
- United Kingdom (UKIPO)
Is PPH available for design patent applications?
No, PPH is not available for design patent applications. Any applications subject to a secrecy order are not eligible for PPH. PPH is also unavailable for provisional, plant, reissue and reexamination applications.
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