The Patent Prosecution Highway benefits

The Patent Prosecution Highway (PPH) is an initiative which offers patent applicants the benefit of accelerated examination while at the same time enabling greater cooperation between intellectual property offices to help reduce backlogs and delays in the international patent system. Under the PPH, once a set of claims have been found to be allowable at a first office (OFF) accelerated processing can be requested at a second office (OSF) providing that claims are filed there which are substantially similar to those previously found allowable. The examination reports, citations and correspondence from the initial examination are also made available to the examiner in the OSF.

PPH is a work sharing (rather than mutual recognition) initiative. The examiner in each office still ensures that an application complies with the requirements of his/her national law, but by encouraging applicants to file claims already found to be allowable in another office, along with the relevant background documentation, examination in the OSF is inevitably quicker and easier as most if not all major barriers to the granting of the application will already have been addressed.

Applicants benefit from a greatly reduced pendency time, fewer office actions and a higher likelihood of the application being granted at the first office action. By way of example, applications under the PPH at the JPO based on US applications have an average pendency to first office action of 1.8 months as compared to 29.1 months for similar non-accelerated applications. The PPH is free to use and does not add to the normal cost of prosecuting an application. Furthermore, the resultant reduction in office actions results in lower costs and attorney fees. The PPH can provide a useful mechanism to accelerate single applications to grant if a specific need arises or alternatively enables applications at multiple offices within the PPH network to be accelerated either simultaneously or sequentially.

The PPH is fully compatible with the Patent Cooperation Treaty (PCT) and can be utilised as part of a comprehensive global patenting strategy. The PPH is particularly desirable for applicants looking for fast patent protection in a small number of countries and/or for patent families with claims of identical scope.

Participating offices benefit from fewer actions per application, helping to reduce backlogs and improve the efficiency of the international patent process. The utilisation of work carried out by other offices also helps guarantee the granting of high quality patents.

All PPH agreements are currently bi-lateral and at present there are 15 offices in the PPH network including the USPTO, JPO and the EPO, with China's SIPO set to join the network having made a provisional agreement with the USPTO. The IPO currently has three PPH agreements with the USPTO, JPO and KIPO.