1. INTRODUCTION

The United States Patent and Trademark Office (USPTO) is joining together with the European Patent Office (EPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO) to introduce a new Patent Prosecution Highway (PPH) Pilot Program.

The five member offices, collectively known as the “IP 5,” launched the 3-year pilot program on January 6, 2014 with the purpose of making it even easier for applicants to participate in the PPH.

  1. BACKGROUND

The PPH in the USPTO has existed since 2006, beginning with a bilateral agreement with Japan.  Since that time, the USPTO has entered into PPH agreements with 14 countries.  At its core, the PPH is a way for patent offices to share work product and, in doing so, allow applicants to obtain patents faster and more efficiently.

Under the PPH, when an applicant receives indication of allowable subject matter in one or more claims from one patent office, a PPH request can be made in a second participating patent office.  With the request, the applicant is required to present the claims in substantially the same form as allowed in the first office, as well as submit all the prior art considered in the first office.  In the U.S., examination of an application participating in the PPH is expedited without requiring an additional fee.

  1. IP 5 PPH

The IP 5 initiative replaces individual bilateral agreements between the five offices and, in doing so, facilitates the process for applicants by applying consistent requirements -- and forms -- across all participating offices.  Under the IP 5 PPH, a request can be made based on allowable subject matter determined by either a PCT work product (a written opinion or an international preliminary examination report) or a national work product.

  1. Global PPH

The USPTO is also participating in a second PPH Pilot Program named “Global PPH.” The IP 5 PPH and Global PPH pilot programs are substantially identical, and are scheduled to run concurrently through January 6, 2017.  Members of the Global PPH are as follows:

Australia (IPAU)

Canada (CIPO)

Denmark (DKPTO)

European Patent Office (EPO)

Finland (NBPR)

Hungary (HPO)

Israel (ILPO)

Japan (JPO)

Korean (KIPO)

Nordic Patent Institute (NPI)

Norway (NIPO)

People’s Republic of China (SIPO)

Portugal (INPI)

Russia (ROSPATENT)

Spain (SPTO)

Sweden (PRV)

United Kingdom (UKIPO)

United States (USPTO)

  1. Conclusion

The PPH offers proven advantages both to participating offices -- in sharing of work product -- and applicants -- in savings of time and money.  These new multilateral PPH pilot programs continue on this theme by streamlining the process for applicants.  Applicants filing in more than one office should always keep the PPH option in mind.