The Kenneth J. Germeshausen Center, created in 1985 through the generosity of Kenneth J. and Pauline Germeshausen, is the umbrella organization for Pierce Law's intellectual property specializations. Today the Germeshausen Center is a driving force in the study of international and national intellectual property law and the transfer of technology. It acts as a resource to business as well as scientific, legal and governmental interests in patent, trademark, trade secret, licensing, copyright, computer law and related fields.

The Center bears the name of its benefactor Kenneth J. Germeshausen, one of New England's pioneering inventors and professor of electrical engineering at Massachusetts Institute of Technology. Germeshausen was also co-founder of the international high technology firm of EG&G.

What Can The Patent Prosecution Highway Do For You? by Ross Krutsinger

The patent prosecution highway (PPH) has expanded to include the U.S. and ten other patent offices around the world. Several PPH pilot programs have reported successes sufficient to become permanent. But, although the PPH provides faster and more efficient patent examination for some applicants, the PPH has not been widely used. The PPH presents limitations, costs, and eligibility requirements that require considering whether it is the appropriate strategy. This article will answer five basic questions: (1) what is the PPH, (2) why should an applicant use the PPH, (3) what are the eligibility requirements, (4) what are limitations and drawbacks of the PPH, and (5) what are the new developments. 

What Is the PPH?

Prior to the Patent Prosecution Highway, patent applications filed in multiple countries would be examined independently, with many of the individual offices simultaneously examining identical or near-identical versions of a patent application and evaluating it with respect to the same prior art references.[i] Because patent statutes have not been harmonized, patent offices in various countries cannot give each other's work full faith and credit even though much of the content of the examination may be similar enough to be shared.[ii] The volume of patent applications worldwide has increasedand so have the application backlogsso PPH initiatives were developed to help reduce these backlogs and attempt to eliminate duplicative efforts in the examination process.[iii]

            The way PPH works is relatively straightforward. When a patent application is first filed in a participating patent office, the office of first filing (OFF) performs prior art searches and determines whether the claims are patentable.[iv] Based on a finding of at least one allowable claim from the OFF, a PPH agreement between two patent offices allows an applicant to fast-track the application in the office of second filing (OSF) by advancing the application's location in the queue of patents to be examined.[v] Thus, an application approved for the PPH is treated out of turn and examined before many other regular applications that were filed earlier.[vi] The PPH program then benefits the OSF by allowing that office to rely in part on the search and examination results from the OFF.[vii] This reduces the search and examination efforts, which results in increased efficiency, consistency, and examination quality.[viii] Although each patent office still makes an independent patentability determination, the OSF can save resources by using the search results of the OFF as a place to start its own examination.[ix] Additionally, by allowing examiners to utilize the work product of other patent offices, the PPH streamlines the patent system and promotes faster and higher-quality patent examination.[x]            

The Patent Prosecution Highway began in 2006 with an eighteen-month pilot program between the USPTO and the Japan Patent Office (JPO).[xi] That program was sufficiently successful to be made permanent in 2008.[xii] Based on initial success with the USPTO-JPO program, the USPTO has established other pilot programs, including a PPH with the UK (September 2007), Korea (January 2008), Canada (January 2008), Australia (April 2008), Europe (September 2008), Denmark (November 2008), Singapore (January 2009), Germany (April 2009), and Finland (July 2009).[xiii] 

Why Should an Applicant Use the PPH?

Benefits of using the PPH include faster patent examination, more consistent examination in multiple patent offices, significantly higher allowance rates, fewer office actions, and the potential to greatly reduce search costs.[xiv] For example, the USPTO reported 94% allowance rates (more than double the usual rate) and fewer than half of the number of office actions as compared to other U.S. patent applications.[xv] Also, the USPTO touts that by coordinating patentable results between both nations' offices, applicants can expect to obtain patents in both nations more quickly.[xvi] Additionally, claims from country to country are more consistent due to the requirement for participation in the PPH that claims have the same or similar scope as those allowed by the OFF.[xvii]

  By using the PPH to bypass the usual procedures, a patent may issue months or even years earlier at the OSF.[xviii] Faster patent examination may be particularly important for companies who depend on having an issued patent in order to secure funding or to establish a foothold in the market.[xix] The PPH is also a strategic tool for some companies, especially larger ones, with active patent portfolio management and licensing programs.[xx] Until a patent issues, one cannot exclude others from the invention, recover damages for infringement, or license the patent.[xxi] Thus, for technology with a short shelf-life, the increased cost and burden of meeting the requirements to fast track an application using the PPH may be worthwhile.[xxii] For time-sensitive technologies and highly valuable patents, the ability to enforce a patent or license it sooner could make a significant difference in revenue for the patentee, especially at the front end of the patent term when there are few or no competing technologies.

What Are the Requirements?

   Applicants who want to use the PPH should file applications using the common application format agreed upon by the Trilateral Offices (USPTO, EPO, and JPO), which includes using SI units and labeling claims as claim 1, claim 2, and so on.[xxiii] The application must also be filed under the Paris Convention or be a national phase PCT application with no priority claims.[xxiv] Once the OFF issues a patent or finds at least one allowable claim, the applicant may then request to participate in the PPH at the OSFprovided that examination has not yet begun.[xxv] U.S. applications for plant or design patents, provisional applications, reissue applications, reexamination proceedings, and applications subject to secrecy are excluded from the PPH.[xxvi]

  Eligibility requirements and procedures vary from office to office, and even sometimes differ within one office depending on whether it is the OFF or OSF.[xxvii] Prior to requesting the PPH program for applications filed with the USPTO as the OSF, for example, four requirements must be met: (1) the U.S. patent application must be related sufficiently close to the OFF application as described in the USPTO's multi-prong test, (2) the OFF must find at least one claim in the application allowable, (3) each of the claims in the U.S. application must correspond in scope to the claims allowed by the OFF, and (4) examination in the U.S. must not have begun.[xxviii] If these requirements are met, the applicant may file the required form with the USPTO along with the fee and petition to make the application special, and must include: copies of office actions from the OFF; translations, a table that relates claims in the OSF with allowed claims in the OFF; and an information disclosure statement that lists the references the OFF cited.[xxix] The USPTO gives a PPH applicant two chances to get formalities right.[xxx]

What Are the Limitations or Drawbacks of the PPH?

            While fast tracking the examination process can reduce examination time by several years in some cases,[xxxi] results vary with different offices and with different art types. For one patent practitioner, the PPH has been useful for Japanese clients filing in Japan first.[xxxii] On the other hand, this practitioner expects the PPH to be less useful for applications filed first in the U.S., because some foreign offices will have already begun examining the application by the time the USPTO allows the claims, defeating the application's eligibility for the PPH.[xxxiii]

            With some countries, the PPH may only achieve minimal improvement when the OSF depends on the final search results or a patent grant from the OFF. For applications first filed in Singapore's IPOS and then filed in the U.S., the PPH program may reduce the application process by two to three years.[xxxiv] However, the benefit to Singapore applications first filed in the U.S. would be much less significant since they would rely on U.S. examination results.[xxxv] In such a case, only the grant stage of the Singapore application would be reduced.[xxxvi] The grant stage in Singapore typically takes between two and four months, so the benefits of using the PPH in this instance may be relatively insignificant compared to the total average pendency of 35 months for an application at the USPTO.[xxxvii] Stated another way, the delay at the OFF may determine the overall examination delay; the long pendency at the USPTO leaves, for some, little relief and little to be excited about.[xxxviii]  

   The costs to use the PPH may also be an issue for some applicants. Since costs to secure patent protection in foreign countries can be daunting, many companies want to delay foreign costs and examination as long as possible, a choice that is inconsistent with using the PPH.[xxxix] Applicants must be able to absorb the increased expenses:   the PPH requires additional attorney time and may entail additional translation costs.[xl] In this sense, the PPH approach may be viewed as an investment with costs that occur sooner rather than later.[xli] Plus, while some feel the documentation requirements for an application to enter the PPH are relatively routine after completing the process a couple of times, others still regard them as notoriously heavy.[xlii]

   Applicants may also find their options during prosecution are limited by PPH requirements. To use the PPH, claims in the OSF must correspond in scope with the claims allowed in the OFF.[xliii] If, for example, the USPTO finds a prior art reference that the JPO did not find and the claims need to be amended to be allowed in the U.S., a difficult choice may arise.[xliv] The applicant must either argue the application as filed, or amend the scope of the claims and re-file as a continuing application with an additional filing fee.[xlv] Thus, time and money are at stake and the applicant's options are very limited with respect to making claim amendments.[xlvi]

   Although the PPH looks good on paper and the USPTO encourages it strongly, it has not seen widespread use.[xlvii] After just five years in existence, many patent practitioners remain unfamiliar with using the PPH. Also, an applicant interested in fast tracking a patent application with the PPH should consider which PPH programs will provide the reduced pendency sought, whether the applicant has the resources to absorb additional up-front costs, and to what extent faster examination will benefit the applicant's portfolio strategy. Applicants should also further scrutinize claim scope since amendment options may be quite limited.

What Are the New PPH Developments?

   In order to collect more information before making formal decisions, the USPTO and the IPOS have agreed to extend the one-year pilot program between those offices, which was set to expire in February 2010.[xlviii]

     The Trilateral Offices (USPTO, JPO, and EPO) entered new agreements in November 2009, that permit a Trilateral Office to utilize a positive result from the PCT work product of another Trilateral Office, thus greatly expanding the PPH to more applicants.[xlix] Prior to this agreement, the PPH was limited to search and examination results of national applications filed under the Paris Convention.[l] The new agreements permit examiners to use international search reports, written opinions, and international preliminary examination reports created under the PCT framework.

Conclusion

   As indicated by recent developments and program expansion, the patent prosecution highway program has much to celebrate, such as the potential to reduce patent examination times and reduce duplicative work among patent offices. However, applicants who wish to take advantage of the PPH must balance the benefits and limitations, in addition to becoming familiar with procedures and requirements. Since the start of its first program just five years ago, the PPH has seen limited use, but as more and more applicants use it, the PPH will likely continue to expand and become a common tool for applicants seeking international patent protection. For forms and additional information on specific PPH programs, visit the USPTO website at http://www.uspto.gov/patents/init_events/pph/index.jsp

 

Ross Krutsinger (J.D./LL.M. IP '11) Ross is an editor for IDEA: The Intellectual Property Law Review. He has interned at Waddey & Patterson, PC, and is completing an externship with Seyfarth Shaw. Additionally, the author greatly appreciates the help and insight of Lock See Yu-Janhes, a Partner at Fitzpatrick, Cella, Harper & Scinto.