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Patent Prosecution Highway (PPH) – Fast Track Examination of Patent Applications

There is significant redundancy in the prosecution of patent applications around the world, as many patent practitioners are well aware. A patent might take anything from 2 to 5 years to be granted. There are numerous ideas and methods for expediting this procedure and obtaining a patent in less time. The greatest strategy to lessen the likelihood of a delay in patent approval is to be extremely thorough with the processes like Patentability Search, Patent Prior Art Search, Patent Validity Search, and Patent Drafting. Rather than attempting to do it yourself, it is generally preferable to look for IP Consulting firms for professional assistance.


While there are numerous strategies to speed up the patent prosecution, Patent Prosecution Highway or PPH remains a top choice. The PPH shorten its time for matching applications to be examined at participating intellectual property offices.


What exactly is Patent Prosecution Highway (PPH)?

First launched in 2006, it is a collaborative effort among the participating foreign offices to expedite the allowance of patent applications that have previously received favourable decisions. Participating patent offices have agreed that if an applicant receives a final judgement from a first patent office allowing at least one claim, the applicant may request fast track examination of the corresponding claim(s) in a pending patent application with a second patent office.


PPH takes advantage of fast-track examination methods currently in place at participating patent offices to allow applicants to receive the final disposition of a patent application more rapidly and efficiently than with a traditional examination. By exchanging patent search and examination results, the PPH has shown to be a successful way of speeding up patent prosecution procedures. This agreement, which takes place between two patent offices, allows one patent office to reuse search and examination results conducted by the other patent office, allowing one patent office to benefit from this agreement by avoiding any waste of time or effort in conducting a thorough search and examination of patent applications.

How Does the Patent Prosecution Highway Work?

The rationale is that patent claims in different nations for the same application are similar. According to the patent offices involved in PPH, Patents deemed worthy in other countries deserve a faster decision than routine patent claims. This is because it will not be required to fill out as much documentation.

The Patent Prosecution Highway expedites the application in other member countries if one foreign office considers the claim has some substance. Because patent officers can utilise the same search and examination results that a foreign office used in its ruling, they can work more rapidly than normal. The Patent Prosecution Highway, in other words, prohibits multiple countries from duplicating the same effort.

An applicant must first receive a written opinion or an examination report to begin the process. A final verdict is not required in the document. It just needs to state whether or not the application contains permissible subject matter. With this document in hand, the applicant can now submit an application to the USPTO, requesting a speedier review of the patent application in the U.S.

The government does not respond to these inquiries right away. It could take up to two months for the application to be fast-tracked. After that, the respective patent office may take another three months to decide on the application. As a result, the Patent Prosecution Highway is exceptionally rapid by typical patent ruling standards.


Why would you want to use the Patent Prosecution Highway?

While the PPH's work-sharing provisions do not ensure the issuance of a patent, and substantive review is still required under U.S. law and regulations, the examination process is greatly accelerated. Whether or not to grant a PPH request is usually made within four months of the request being filed. After a request is granted, PPH petitions are usually reviewed within 2-3 months.

PPH applicants must ensure that their claims "sufficiently match" previously approved material. This resemblance must be demonstrated beginning with the initial PPH petition and continuing through every amendment made during the U.S. prosecution phase. Overall, the PPH is a viable choice for PPH-eligible applicants who seek a faster examination.


Global Patent Prosecution Highway

Under the Global Patent Prosecution Highway (Global PPH) pilot, a request for accelerated processing can be made at any participating office based on work products, including PCT work products, from any one of the other participating offices under unified criteria.


Offices participating in the Global PPH pilot are:

AT Austrian Patent Office

AU Australian Patent Office

CA Canadian Intellectual Property Office

CL National Institute of Industrial Property (Chile)

CO Superintendence of Industry and Commerce (Colombia)

DE German Patent and Trade Mark Office

DK Danish Patent and Trademark Office

EE Estonian Patent Office

ES Spanish Patent and Trademark Office

FI Finnish Patent and Registration Office (PRH)

GB Intellectual Property Office (United Kingdom)

HU Hungarian Intellectual Property Office

IL Israel Patent Office

IS Icelandic Intellectual Property Office (ISIPO)

JP Japan Patent Office

KR Korean Intellectual Property Office

NO Norwegian Industrial Property Office

NZ Intellectual Property Office of New Zealand (IPONZ)

PE National Institute for the Defense of Competition and Intellectual Property Protection (Peru)

PL Patent Office of the Republic of Poland

PT National Institute of Industrial Property (Portugal)

RU Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation)

SE Swedish Intellectual Property Office (PRV)

SG Intellectual Property Office of Singapore

US United States Patent and Trademark Office (USPTO)

XN Nordic Patent Institute

XV Visegrad Patent Institute

IP5 Patent Prosecution Highway

On January 6, 2014, the five largest intellectual property offices in the world (IP5 Offices) - JPO (Japan), CNIPA (China), EPO (Europe), KIPO (South Korea), and USPTO (USA) - launched an IP5 PPH pilot programme, making three types of PPH (Normal, MOTTAINAI, and PCT-PPH) available across the five Offices.


The request period for PPH:

It is possible to engage in the PPH at the KIPO not only when the examination has not yet begun but also when it has already begun.

It is needed at the JPO, EPO, CNIPA, and USPTO that substantive examination of the application for which PPH involvement is requested has not yet begun.

"The substantive examination has begun" at the EPO denotes the generation of an examination start date. For unpublished applications, the examination starting date is only viewable at the request of the applicant or his representative or by inspecting the file via the MyFiles service; for published applications, it is visible to all in the European Patent Register.

"The substantive examination has commenced" at the JPO, CNIPA, and USPTO denotes the issuance of any substantive examination-related office action.


The applicant is granted a set number of chances to fix particular flaws.

The applicant is given several chances to remedy errors at the JPO.

When the KIPO, CNIPA, or USPTO discovers new problems that have not been previously reported, the applicant is given the opportunity to fix them.

The applicant is alerted of all faults in the PPH request at the EPO, and he or she has only one chance to correct them.


PPH in USPTO:

An applicant who receives a ruling from the office of first filing (OFF) that at least one claim in an application filed in the OFF is patentable may ask the office of second filing (OSF) to expedite the examination of the corresponding claims in corresponding applications filed in the OSF under PPH. After filing the priority application under the PPH program, the U.S. application must come from the route of either the Paris Convention or the Patent Co-operation Treaty. At least one claim in such an application must have been certified patentable by the office of first filing. The claims of the original or revised U.S. application must properly correspond to one or more of the authorized claims in the office of first filing.

The USPTO and France's National Institute of Industrial Property (INPI) have agreed to a new bilateral PPH pilot program under Global PPH principles, effective from December 1, 2021, to November 30, 2024.

The data depicts the PPH requests by office of first filing and offices of later examination. Despite the many advantages, statistics show that PPH is not being used as widely as it should have. Like the saying goes, every coin has two sides, and the PPH programme is no exception. The total number of filings account to 30,686. This mainly due to the following reasons:

  • The Patent Prosecution Highway limits the capacity to file claims in other jurisdictions for broader or narrower patents, restricting claim flexibility.

  • Prosecution might take a long time and cost a lot of money. An application is reviewed by an examiner, and it is sent back and forth between them and a patent attorney multiple times before being granted. The cost of sending and translating a single letter for an attorney might run into the thousands of dollars.

  • A lot of formalities are tedious to handle which makes the process rather problematic.

  • Regulations and procedures change from one country to the next, which might lead to inconsistencies.

On analysis, it comes to notice that the US, China, Japan, Korea, and Canada are seen more active which is credited to the fact that they have adopted PPH long back and have been the hotspots of tech giants who can afford the PPH procedures.


PPH in India:

At the Japan - India summit meeting on October 29, 2018, the leaders of Japan and India concurred to start a bilateral PPH program on a pilot basis in specifically identified folds of the invention in the first quarter of the fiscal year 2019. The programme was started as an experiment, and as a result, it is only applicable to certain fields of invention, such as Computer Science, Electrical, Electronics, Information Technology, Physics, Textiles, Civil, Mechanical, Automobiles, and Metallurgy, whereas JPO can accept applications in any field of technology. Under the program, Japanese companies can request expedited examinations in India through simplified procedures based on their applications whose claims have been determined to be patentable in Japan. Also, after claims have been determined to be patentable in Japan, applicants can acquire patents swiftly and expand their business smoothly in India.

While submitting a request to Indian Patent Office under the said PPH program, the following points are to be noted-

  • The number of the requests for the PPH in IPO will be limited to 100 cases per year on first come first serve basis.

  • An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year.

  • Request for assigning special status for expedited examination under the PPH is required to be filed online in prescribed form 5-1 under chapter 5 of the PPH guidelines. When the Office of Later Examination decides that the request is acceptable, the application is assigned a special status for an expedited examination under the PPH.

  • An applicant/Authorized agent can file the request for expedited examination on Form 18A only after the request for assigning special status filed on form prescribed in chapter 5 is accepted by the Indian Patent office. the decision on acceptance/rejection/defect noticed shall be communicated to the Applicant/Authorized agent through email as well as message on e-filing portal.

  • In case of defects in form 5-1, the applicant will be provided opportunity to rectify the defects within 30 days from the issue of notification of defects by IPO.

  • Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be as prescribed under the Patents Rules, 2003.

The Indian IP office would benefit from the PPH initiative in the following ways:

  • Reduction in the time it takes to decide on patent applications.

  • Patent applications are being processed faster.

  • Improvements in the quality of patent application searches and examinations.

  • A chance for Indian inventors, including MSMEs and start-ups, to have their patent applications examined more quickly in Japan.

Critics believe that the prototype PPH programme implemented in India may have some unintended consequences. One of the most significant risks is the possibility of loosening India's tight patentability rules.


Conclusion

To maximize the benefits of PPH programmes while avoiding or mitigating any potential drawbacks, strategic approaches should be created. To take advantage of PPH programmes, applicants must first be aware of concerns such as topic matter, priority linkages between applications, claim scope, and scheduling. PPH requires deep knowledge of the procedures governing the application process.

When it comes to speeding up the patent process, there is no one-size-fits-all answer, which makes it difficult for people unfamiliar with the inner workings of patent offices to do the right thing on their own. An applicant who wants to understand more about how PPH programmes can help them should contact skilled patent consultant, who can analyze their portfolio of patents and patent applications and devise strategies for maximising the PPH programmes' potential benefits.


References-

https://www.jpo.go.jp/e/toppage/pph-portal/ip5-pph.html

https://www.nutter.com/ip-law-bulletin/successful-use-of-the-patent-prosecution-highway

http://www.ipindia.nic.in/newsdetail.htm?593

https://www.uspto.gov/patents/basics/international-protection/patent-prosecution-highway-pph-fast-track