The Patent Prosecution Highway (PPH) was created to speed up the examination process for patent applications filed in patent offices located throughout the world. Through the PPH process, an applicant that receives a ruling from a first patent office stating that claims in a patent application are acceptable may request that a second office (i.e., in a second country or region) fast track the examination of corresponding claims in a corresponding application(s) filed in the second office. The second office may thus use the search and examination results of the first office to avoid a duplication of work in an effort to speed up the examination process in the second office.
On January 6, 2014 additional PPH pilot programs were implemented in the United States Patent and Trademark Office (USPTO). These pilots allow for a single form and set of guidelines for all of the major offices engaged with the USPTO in the PPH process.
A first pilot program is the Global Patent Prosecution Highway (Global PPH). The pilot program will run for a year ending on January 5, 2015. Unlike the original PPH program, the new pilot does not depend only on the allowed claims from the first office examining the application. Instead, patent applicants can request accelerated examination at any office involved in the program if the claims have been found acceptable by any other office involved, i.e., not just the first office that examined the application. This process should allow for even more expedient examination in situations where a firstoffice has not finished examining an application, but a second or third office has. Thus, an applicant can request expedited examination based on the subsequent office’s allowable claims. Participants in the Global PPH can access the following patent offices:
- IP Australia (IP Australia);
- Canadian Intellectual Property Office (CIPO);
- Danish Patent and Trademark Office (DKPTO);
- National Board of Patents and Registration of Finland (NBPR);
- Hungarian Intellectual Property Office (HIPO);
- Icelandic Patent Office (IPO);
- Israel Patent Office (ILPO);
- 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)
- Swedish Patent and Registration Office (PRV)
- United Kingdom Intellectual Property Office (IPO); and
- United States Patent and Trademark Office (USPTO).
A second pilot was formulated with the five largest patent offices, IP5, to enable an applicant to request accelerated examination of an application from one IP5 office to another IP5 office based on a PCT opinion. The 5 IP offices are the European Patent Office, the Japanese Patent Office, the Korean Intellectual Property Office, the State Intellectual Property Office of the People’s Republic of China and the USPTO. Unlike the Global PPH, the IP5 PPH program will run for three years ending on January 5, 2017 instead of one year.
The requirements under the IP5 PPH are the same as the requirements under the Global PPH and thus USPTO applicants do not need to specify which program they are filing under. The USPTO recently put out a notice announcing how both these programs will be implemented. This notice explains eligibility requirements to participate, required documents and an explanation of the procedures. The notice can be found here and the participation request form can be found here.