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What Does the Patent Prosecution Highway Mean for your Application?

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159340675-454381-editedThe global intellectual property landscape is becoming increasingly interconnected. The increased mutual accessibility of patent databases means that it is much easier for an inventor to secure international patent protection than it was a generation ago. With the increased research requirements of international IP prosecution comes a very important benefit in the form of the Patent Prosecution Highway (PPH) program.

Originally introduced in 2006, the program offers patent applicants the potential to avoid much of the overhead and delays that would accompany separate prosecution efforts with various international patent authorities.

Under the PPH, participating international patent offices will acknowledge an applicant’s patents and claims previously allowed by other patent authorities in the program. International claims recognized in this manner qualify the application for expedited “fast track” examination in the local patent jurisdiction. Local prosecution requirements are often streamlined in consideration of other agencies’ prior approvals.

In January 2014, standardized forms and procedures were introduced for use at the USPTO and any of the other patent authorities participating in the global PPH program. Those offices are:

Australia (IPAU)

Canada (CIPO)

Denmark (DKPTO)

European Patent Office (EPO)

Finland (NBPR)

Hungary (HPO)

Iceland (IPO)

Israel (ILPO)

Japan (JPO)

Korea (KIPO)

Nordic Patent Institute (NPO)

Norway (NIPO)

China (SIPO)

Portugal (INPI)

Russia (ROSPATENT)

Spain (SPTO)

Sweden (PRV)

United Kingdom (UKIPO)

 

 

In addition to the global Patent Prosecution Highway program, the USPTO has similar, individual agreements with Austria, Colombia, the Czech Republic, Germany, Mexico, Nicaragua, the Philippines, Singapore, and Taiwan. Those programs operate in a similar fashion to the global program, but have separate applications.

An inventor may therefore choose, for any number of reasons, to first prosecute its patent claims in another jurisdiction before seeking a U.S. patent through the prosecution highway program.

In some cases, an international ruling of allowance on a patent claim may not be necessary for PPH eligibility. The European Patent Office’s prior art search procedure on incoming applications results in a document called the Extended European Search Report (EESR). The EESR preliminarily indicates whether an application’s claims are likely to be allowed under EPO rules. Even if prosecution with the EPO is discontinued, an EESR showing allowable claims is sufficient to make an application eligible to apply for PPH status with the USPTO.

The USPTO will generally decide whether to grant PPH status to an incoming application within 60 days of receiving the paperwork. Once an application has been approved, the first office action on that application typically occurs within five months, a figure that compares very favorably with the 18.4 month pendency facing the average patent application in September 2014.

Any patent application that has already been submitted to the USPTO may be ineligible for participation in the USPTO’s version of the Patent Prosecution Highway. If a patent examiner at the USPTO already has begun an examination — even if that examination has gone no further than the examiner’s own prior art search — the application becomes ineligible for submission to the PPH program.



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