On January 29, 2012, the USPTO instituted the Patent Prosecution Highway (PPH) 2.0 program. This article provides a summary of this program and the requirements for participation.
The PPH program is a work-sharing program based on agreements with other national and regional patent offices that allows examiners to leverage the search and examination results from patent offices in participating countries, thereby speeding up the examination process for counterpart applications. The PPH program expedites examination by making the application “special” and thus having it examined out of turn. It is important to remember, however, that under the PPH program, the fact that an application filed in a participating jurisdiction has allowable claims does not mean that similar claims in the corresponding application will be automatically allowed; examiners are still required to conduct their own search and examination based on the patent law of the office examining the patent application. The PPH program merely allows for an expedited examination.
There are three types of PPH programs. The first type is the “regular” PPH program, where an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim is patentable may request that the Office of Second Filing (OSF) expedite the examination of corresponding claims in the counterpart application filed in the OSF. The United States Patent and Trademark Office (USPTO) currently has PPH agreements with the following 20 jurisdictions: Australia, Austria, Canada, China, Denmark, European Patent Office, Finland, Germany, Hungary, Iceland, Israel, Japan, Korea, Mexico, Norway, Russia, Singapore, Spain, Taiwan, and the United Kingdom.
The second type of PPH program is the PCT-PPH program, where an applicant receiving a favorable Written Opinion or International Preliminary Report on Patentability from one of the participating offices acting as an international authority may request that a corresponding national phase entry or a national application filed at the USPTO be expedited. The USPTO currently has PCT-PPH agreements with the following 11 jurisdictions: Australia, Austria, China, European Patent Office, Finland, Japan, Korea, Norway, Russia, Spain, and Sweden.
The third type of program is the PPH 2.0 program, which is a new version of the PPH MOTTAINAI pilot program that began on July 15, 2011, and attempts to simplify PPH requirements and procedures. The PPH 2.0 program commenced on January 29, 2012, and will run for a trial period of one year ending on January 28, 2013 (but may be terminated earlier if participation exceeds a manageable level for the participating offices). The PPH 2.0 program is not available for plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order. The USPTO and PPH 2.0 participating offices will evaluate the results of the PPH 2.0 program to determine whether and how the program should be implemented after the trial period. The USPTO currently has PPH 2.0 agreements with the following eight jurisdictions: Australia, Canada, European Patent Office, Finland, Japan, Russia, Spain, and the United Kingdom.
The PPH 2.0 program applies to PPH requests filed in the USPTO on or after January 29, 2012, based on claims that have been allowed by one of the above-listed PPH 2.0 participating offices in a counterpart application filed in that office. Thus, until January 28, 2013, the “regular” PPH program will be available only for US applications relying on allowable claims from Austria, China, Denmark, Germany, Hungary, Iceland, Israel, Korea, Mexico, Norway, Singapore, and Taiwan.
Unlike the regular PPH program, which uses an OFF and OSF framework (as described above), the PPH 2.0 program uses an Office of Earlier Examination (OEE) and Office of Later Examination (OLE) framework. Under the PPH 2.0 program, participation in the PPH may be requested on the basis of an allowance from any patent family application from any participating office, regardless of whether the participating office was the office of first filing. To be eligible to participate in the PPH 2.0 program at the USPTO, applicants must meet the following four requirements
- At least one claim in a patent application must have been determined to be allowable/patentable by one of the PPH 2.0 participating offices.
- The US application and the corresponding application filed in the PPH 2.0 participating office that has at least one allowable/patentable claim must have the same priority or filing date (examples are provided in the annex to the USPTO’s notice on the PPH 2.0 program referenced at the end of this article).
- All the claims in the US application, as originally filed or amended, must “sufficiently correspond” to one or more of the allowable/patentable claims in the application filed in the PPH 2.0 participating office. A claim is considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claim in the US application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. A claim in the US application which is narrower in scope than the claims indicated as allowable in the application filed in the PPH 2.0 participating office will also sufficiently correspond if presented as a claim dependent upon a claim which is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office.
- Substantive examination of the US application must not have begun. The issuance of a restriction requirement in the US application does not constitute the beginning of substantive examination. As long as the examiner has not started working on the first action on the merits, an applicant can still request participation in the PPH 2.0 program. If the examiner has started work on the first action on the merits, or if the first action on the merits has already been received, one can file a continuing application and file a request for participation in the PPH 2.0 program in the continuing application.
If all four of the above requirements are met, in order to apply for the PPH 2.0 program an applicant will need to:
- Submit a request for participation in the PPH program (Form PTO/SB/20). The request forms are jurisdiction specific and can be found on the USPTO PPH web page (one of the references at the end of this article links to a sample request).
- Submit a copy of the latest office action prior to issuance of the Decision to Grant a Patent in the application from the PPH 2.0 participating office if the application was not allowed in a first office action. If the office action is not in English, an English translation (which may be a machine translation) must be submitted. There is no need to provide a statement that the English translation is accurate. In addition, there is no need to submit a copy of the Decision to Grant a Patent or a copy of the allowable claims.
- Submit an information disclosure statement (IDS) listing the documents cited in all the office actions from the PPH 2.0 participating office and copies of the cited documents in the IDS, unless such an IDS has already been filed in the counterpart US application.
- Fill in a claims correspondence table in the request or in a separate table. The claims correspondence table must indicate how all the claims in the US application correspond to the allowable/patentable claims in the application filed in the PPH 2.0 participating office.
- The request and all supporting documents must be submitted to the USPTO via EFS-Web and indexed with the document description “Petition to make special under Patent Pros Hwy.” Any preliminary amendment or IDS submitted with the PPH 2.0 documents must be separately indexed as a preliminary amendment and an IDS, respectively.
A petition fee is not required.
If the request does not meet all the requirements of the PPH 2.0 program or provide the required documents listed above, the applicant will be notified and any defect(s) identified. The applicant is then given one opportunity to cure the defect(s) by filing a renewed request. If the request is not perfected, the applicant will be notified and the application will await action in its regular turn. Note that during the period when the applicant is notified of any defect(s), the USPTO will not suspend action on the application. Thus, if a first substantive action is issued during the period between when an applicant is notified of any defect(s) with the initially filed request and the filing of a renewed request, the renewed request will be dismissed.
Once a proper request is filed, the request is generally decided within two months of its filing. If the PPH is granted, the examiner will generally examine the application in two to three months from the grant of the PPH request, provided the application has completed all its pre-exam processing and is ready for examination. An application that has been given special status remains under special status during the entire prosecution.
After the request has been granted, any claims added or amended during prosecution must continue to “sufficiently correspond” to one or more allowable claims in the application filed in the PPH 2.0 participating office. A claim in the US application that introduces a category of claims different from those indicated as allowable in the application filed in the PPH 2.0 participating office (e.g., adding claims drawn to a process of manufacturing a product when only product claims have been allowed) is not considered to sufficiently correspond even if the new claims are dependent on claims which sufficiently correspond to allowable claims in the application filed in the PPH 2.0 participating office.
Any amendments to the claims must include a statement certifying that sufficient correspondence is maintained. If the certification is omitted, the amendment will not be entered.
A request for participation in the PPH 2.0 program carries over to a request for continued examination but does not carry over to a continuing application.
According to the USPTO, the benefits of the PPH programs include accelerated examination, a higher allowance rate (90% for PPH cases vs. 50% for non-PPH cases), fewer actions per disposal when compared to non-PPH cases, and reduced pendency. PPH 2.0 and other PPH programs are worth considering alongside accelerated examination and prioritized Track I procedures as ways of expediting examination of a patent application.
1. USPTO PPH web page (includes FAQs, PPH brochure, PPH video, and forms): http://www.uspto.gov/patents/init_events/pph/index.jsp
2. PPH information portal site with statistics and information from all participating offices: http://www.jpo.go.jp/cgi/linke.cgi?url=/ppph-portal/ index.htm
3. USPTO notice titled “Revised Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with Participating Offices” http://www.uspto.gov/web/offices/com/sol/og/2012/ week10/TOC.htm#ref15
4. Sample request for PPH 2.0: http://www.uspto.gov/forms/sb0020jp.pdf#page=7