The Patent Prosecution Highway: an expanding option for multinational patent filings

Fenwick & West LLP

Jennifer R. Bush

USA
July 7 2009

The Patent Prosecution Highway (PPH) began in July 2006 as a pilot, one-year cooperative agreement between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO). The initial PPH did not hold much real promise for expediting prosecution for U.S.-based patent applicants. Under this early version of the PPH, an applicant with at least one allowed claim in the office of first filing (OFF) could use a simplified procedure to expedite examination of its application in the office of second filing (OSF). However, the program required that the second application claim priority to the first application under the Paris Convention, and excluded applications that reached the OSF via the popular Patent Cooperation Treaty (PCT). This requirement was a substantial hurdle for U.S.-based applicants for whom the USPTO was the OFF, since 64% of U.S. applications later filed in the JPO arrived via the PCT. The other major hurdle for U.S.-based applicants was the requirement that examination could not have commenced in the OSF at the time of application for participation in the PPH. Given the long backlog in the USPTO — often exceeding a three to five year pendency — there were few circumstances in which an application with an allowed claim in the USPTO would not already have entered examination in the JPO, where the average pendency is 31 months.

The Patent Prosecution Highway has changed considerably since 2006. The pilot program between the USPTO and the JPO was formalized in January 2008, and applications filed via the PCT now are eligible for the PPH programs. In addition, the U.S. now has entered into nine (mostly pilot) PPH programs with other patent offices, including those in the United Kingdom, Korea, Singapore, Canada, Australia, Germany, Denmark, Finland, and the European Patent Office (EPO).

With these changes, the PPH has the potential to provide faster results, a higher allowance rate, and a more compact prosecution experience for applicants who file in more than one country. Data for the PPH between the USPTO and the JPO shows that the time to first action in the OSF decreased dramatically — from about 26 months to about 3 months. Similarly, the number of USPTO actions for applications originating in Japan decreased by 40% — down from an average of 2.9 actions to an average of 1.7 actions. Higher allowance rates for PPH cases also resulted in both countries, with a staggering 94% allowance rate in the U.S. (regular cases average 44.2%) and 65% in Japan (regular cases average 49%).

However, some of the burdensome requirements from the original PPH program have been carried over to the current PPH programs, including the requirements that examination must not have begun in the OSF, the applicant must conform the claims in the OSF to those allowed or granted in the OFF, and the applicant must provide paperwork detailing the examination in the OFF, including copies of office actions, references, and showing correspondence between the allowed or granted claims and the ones pending with the OSF.

Moreover, the current PPH still is not ideal for U.S.-based applicants. Despite lifting the restriction on PCT cases allowed to participate in the PPH, far more cases remain poised to receive a benefit from using the U.S. as the OSF, rather than using the U.S. as the OFF, primarily due to the long backlog at the USPTO. In fact, from the PPH’s inception until March 2008, only 227 applicants used the USPTO as the OFF and the JPO as the OSF. However, as additional countries enter into PPH agreements with the USPTO, there will be increased opportunity for expedited examination for U.S.-based applicants who plan to file with at least one other PPH-participating country. Several countries that have recently entered into pilot PPH programs with the USPTO have accelerated examination procedures available that are much less onerous than the Accelerated Examination procedures put in place by the USPTO in August 25, 2006. For example, in the U.K., if a request for substantive examination is filed at the same time as a search request (instead of waiting until the deadline of six months from publication of the U.K. application to request examination), the application automatically is subjected to expedited examination. In Australia and Canada, expedited examination can be obtained by a showing of commercial reasons for the request that are far less stringent than similar procedures in the USPTO.

The introduction of PPH programs into countries with Accelerated Examination procedures provides an alternative way for U.S.-based applicants to get their U.S. patents issued more quickly. For example, an applicant who intends to file an application in one of these countries, in addition to the U.S., and who seeks expedited examination, may choose to request an expedited foreign filing license and file in the non-U.S. country as the OFF. Depending on the pendency period in the country chosen, filing in an OFF outside the U.S. may result in the applicant being issued a U.S. patent faster than filing first in the U.S. In addition, some applicants who might not otherwise consider foreign filing might consider this process as an attractive alternative to the Accelerated Examination procedure in the USPTO, at savings of cost and risk. For example, if the Canadian Intellectual Property Office is used as the OFF, the result may be an issued U.S. patent (using the U.S. as the OSF) at about the same pace as the current USPTO Accelerated Examination program, at about 30% of the cost, and with none of the risk associated with the search and assertions that need to be made about art discovered in conjunction with the Accelerated Examination filing documents. Another option would be to first file a PCT application, and upon examination during the national phase, declare as the OFF the first PPH-participating country to allow a claim, with later participating PPH countries as OSFs.

Unfortunately, for U.S.-based applicants not taking advantage of the PPH, the backlog at the USPTO may ultimately worsen under the current PPH programs. PPH cases receive accelerated examination, and thus are placed in the examiners’ queues before most other classes of pending applications. As a result, as PPH programs become available with more countries, and as usage of them increases, more PPH cases will take priority for examination over cases filed only at the USPTO. Again, the current backlogs in the USPTO across nearly all art units are the primary reason for this likely result. And the U.S.-based applicant who does not file internationally will be the one who suffers the most from the PPH programs.

While all of the current PPH programs are bilateral programs, work-sharing between international patent offices appears to be the trend. Discussions are underway for a multilateral treaty among some of the PPH-participating countries. In July 2008, the USPTO, JPO, and EPO entered into a “Triway” Pilot Program, in which early searches are made in each office and the results shared among the three offices. In October 2008, the “IP5” (USPTO, KIPO, EPO, JPO, and SIPO), laid out a blueprint for work-sharing and international cooperation. Beginning with a framework of ten foundational projects led by one or more IP5 offices, the goals include a common document database, common application format, common access to search and examination results, and a common approach to search strategies, to name a few.

The current PPH and other international work-sharing proposals are concrete steps being taken toward international patent harmonization and cooperation and are reflective of the international nature of business and technology today. Each year more than 250,000 applications are filed in two or more IP5 patent offices. However, many more U.S.-based applications are not filed internationally, mostly due to cost.

The PPH programs provide the opportunity for U.S.-based applicants to speed up prosecution if they plan international filings, or alternatively, to contribute to the growing USPTO backlog for those who do not. However, since most of the PPH programs are currently classified as temporary “pilot” programs, there will be some time before any of these effects take place. Similarly to the original USPTO-JPO PPH pilot program, these other programs may undergo changes before the time they are made final, if at all. Thus, although three years have brought much change to the PPH, more time is needed before the real impact of such programs can be measured.

Jennifer R. Bush