Filing in the Fast Lane: The Patent Prosecution Highway Can Get You From “A” to “B” Quicker (and Cheaper!)
On September 24, 2013, the world’s five largest Intellectual Property Offices, the so called IP5: the USPTO, the Japan Patent Office, the State Intellectual Property Office of the People’s Republic of China, the Korean Intellectual Property Office, and the European Patent Office, agreed to launch an IP5 Patent Prosecution Highway (PPH) pilot program in January 2014. This is just the latest example of the increasing popularity of PPH-type programs already in use in the United States and around the world. In view of the support these programs enjoy, both at the USPTO and foreign Offices, it’s likely they are here to stay. This is a very positive development for companies that file patents, since review of a company’s global filing strategy with an eye toward making use of the patent prosecution highway could yield big benefits.
The PPH programs are bilateral agreements between participating States that facilitate the use of successful prosecution or examination of an application in one State to expedite the examination of a corresponding application in another State. The incentive for the participating States to implement such programs, of course, is that it leverages work that has already been completed in the first State. By making use of such work, the examination of the corresponding application in the second State would be streamlined and more efficient.
There are a number of good reasons for companies to consider use of the patent prosecution highway. Not only has the fee been waived in the U.S., but statistics show that applications using the highway experience reduced pendency and patents issue faster. In addition, there are significant demonstrated savings for such applications in the form of reduced Office Actions, RCE’s required, and Appeals in the USPTO. Similar benefits can be realized for filings in national phase countries with which the U.S. has agreements.
Is there a catch? Some might consider the Patent Prosecution Highway’s requirement of “claim correspondence” between the claims having favorable treatment in the first office and those pending in the second office, a catch. This requires careful review of both claim sets, and may result in narrowing amendments in the second case. Moreover, the PPH system does not promise full faith and credit from one examining office to the other, i.e., positive treatment in one office does not guarantee the same in the other. So, there is some chance that positive treatment in the first office would not be similarly received in the second, and companies will need to factor this into their decision-making process. However, where the first examining office has a reputation for high examination standards, such as the EPO, the likelihood of such an occurrence is much reduced. Indeed, in PCT applications, choice of the international searching authority (ISA) is key with regard to use of the PPH. There are a number of factors to consider in making this choice when using the PPH, but the “deference” given to a particular ISA can be critical. Generally, my recommendation is to use the EPO as the ISA.
Review of a company’s patent portfolio will determine whether the PPH is worthwhile. Certainly, there may be patent cases in a portfolio that, due to a changing market, are no longer considered important, so that use of the PPH may not provide added value. On the other hand, for technology areas that move quickly, early issuance of patents may be very desirable, particularly in view of the potential prosecution savings. For moderate to heavy filers, this can translate into hundreds of thousands of dollars in savings per year and provide relief for tight IP budgets to free-up capital for new cases or expand an organization’s portfolio. While the Patent Prosecution Highway doesn’t completely break down the barriers that currently exist between jurisdictions, it is a very positive and cost-effective step in expediting the prosecution of patents worldwide.
– Bill Reid
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For further information on the Patent Prosecution Highway and how it can benefit your portfolio, contact Bill Reid at firstname.lastname@example.org.
This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.