The Patent Prosecution Highway (PPH) is a system in which positive examination results from a first patent office may be submitted to a second patent office to accelerate examination of a corresponding application by the second patent office.
In July 2006, the original PPH pilot scheme commenced between the US Patent and Trademark Office and the Japanese Patent Office. Since then, the PPH system has expanded considerably and some thirty patent offices now participate, to varying extents. As a result, there exists a network of bilateral PPH agreements between the participating patent offices. An up-to-date list of participating offices and the patent offices with which they have PPH agreements is available here.
The new Global Patent Prosecution Highway (GPPH) pilot scheme replaces and extends a number of bilateral agreements with a single multilateral agreement between 13 participating patent offices*. The aim of the new GPPH pilot scheme is to simplify the PPH request procedure so that it is more accessible to users. The GPPH pilot scheme commences on 6 January 2014.
The GPPH scheme removes some restrictions of the previous PPH relating to the situations in which the PPH could be used. Now, applicants may request accelerated examination at any or all of the participating patent offices (Offices of Later Examination (OLE)) if their claims have already been found to be acceptable by any of the other participating patent offices (the Office of Earlier Examination (OEE)).
Under the original PPH system, each patent office had their own qualifying requirements that it was necessary to comply with when making a PPH request. The GPPH pilot scheme will use a single set of qualifying requirements, which simplifies the system for applicants. Briefly, the requirements are:
- The applications involved must have the same earliest date (priority date or filing date).
- At least one claim must be considered allowable by the OEE during substantive examination. Novelty and inventive step must have been considered.
- All claims presented to the OLE must sufficiently correspond with one or more of those found allowable by the OEE.
- Substantive examination must have been requested at the OLE, or may be requested at the same time as the PPH request, but substantive examination must not have already commenced.
Participating patent offices are required to use Dossier Access Systems and machine translations to access documentation that supports the GPPH requests. Only if the patent office has difficulty in obtaining documents or translations thereof may they ask the applicant to submit them. This development should make the request procedure more efficient.
It is hoped that the GPPH pilot scheme will prove to be a more streamlined and user-friendly system than the original PPH system. If so, then it may well be beneficial for applicants seeking fast and efficient examination of their applications.
* The 13 participating patent offices are IP Australia, Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), National Board of Patents and Registration of Finland (NBPR), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), United Kingdom Intellectual Property Office (IPO), and United States Patent and Trademark Office (USPTO). The European Patent Office (EPO) and the Chinese Patent Office (SIPO) are notable non-participants.