Foreign Patent Applications: The Patent Prosecution Highway

Having a multinational business comes with a plethora of roadblocks toward success, especially bureaucratic ones. If you have ever filed a patent application you are aware of just how true that is for the United States Patent and Trademark Office (USPTO). But every now and then a ruling or new treaty or process is created that is surprisingly helpful. The Patent Prosecution Highway (PPH) happens to be one such process that actually does what it sets out to do and makes patenting in multiple countries faster and easier. This is an international agreement and countries are joining regularly. The process can shorten the pendency time by as much as 1-1 ½ years.  

Announced in January 2014 the USPTO launched the PPH with the intent to simplify already existing procedures that had become outdated. The PPH can accelerate the patent examination process for corresponding applications that have been found allowable by an Office of Earlier Examination (OEE), and which are then filed in participating intellectual property (IP) offices around the world. This means that if your filed application has been deemed allowable in the US it can be filed in a corresponding office, such as Japan, concurrently, thus potentially skipping some efforts by the Office of Later Examination (OLE), and speeding the allowance process, saving filers time and money. Conversely, if an earlier indication of patentability comes from another international IP office, the process in the USPTO can be accelerated.  

The requirements to file for PPH processing in the USPTO are:  

1. Must be filed before substantive examination of the U.S. application begins;
2. All claims in the later application must correspond to the allowable claims in the earlier examined application; 
3. Prosecution documents must be submitted. Usually to include: OEE Office Action (that is, Notice of Allowance, Decision to Grant) and the mailing date, allowed claims and English translation (if necessary), copies of any relevant foreign patents and/or non-patent literature (NPL) considered by the OEE; and
4. Astoundingly, there is no official fee.

In my experience, using the PPH in the USPTO after getting a patentability notice from a foreign IP office has had mixed results. The US examiners, in general, do not give full-faith-and-credit to the foreign examination. But, even so, the time in the USPTO is often shortened by as much as 6-15 months. Understand, that there are about 8,500 individual people in the USPTO who examine patent applications, so the result of a PPH request can vary.

Whether or not you get your US patent application rubber stamped, there are no significant downsides to filing a PPH request, and the shortened time and reduced investment are positives as well.

In the US, if you want different, possibly broader, claims to issue in a patent, a continuation application can be filed to seek different broader claim coverage, whether or  not a patent is allowed after the PPH processing.

Here are the currently participating PPH countries, together with each IP office’s official designation and, where appropriate, how that country works with the USPTO:

Check out The USPTO Article on Patent Prosecution Highway here