Thanks to the Patent Prosecution Highway program (PPH), obtaining patent rights in multiple countries is faster and easier than ever before. Typically, the process of applying for a patent in an additional country is extremely costly and could take up to four years to reach completion; but by taking advantage of the PPH program, inventors can have their patent claims examined by a subsequent country just two months after entry in the program.
Before the PPH program existed, inventors would need to file a separate patent application in each country where rights were desired even though the applications were basically identical. This was because each country’s patent office needed to perform its own existing patent search and patentability examination.
The PPH program reduces the redundancies of these multiple similar patent examinations. It allows applicants to use the favourable findings of the first patent office, known as the Office of First Filing (OFF), in order to expedite the patent examination in a subsequent office, known as the Office of Second Filing (OSF). This makes the process both quicker and cheaper for the applicant.
When inventors take advantage of the PPH program a substantive examination of the application usually begins just two months after it enters the program, which is a fraction of the average typical delay of 25 months. Moreover, the examination process itself is shorter and generally receives less Office Actions, which equates to less money spent on responding to these Actions. Plus, no government fees are required when requesting entry to the PPH program and the process is similar for all countries’ patent offices.
In addition to being faster and less expensive option, patent applications filed under the PPH program have a much higher acceptance rate than normal applications. As an example, patent applications submitted to the USPTO under the PPH program have an approximate 93 per cent approval rate, compared to the overall USPTO acceptance rate of 44 per cent.
The national patent offices involved in the PPH program include: Australia, Austria, Canada, the United States, Denmark, Finland, Germany, Hungary, Russia, Spain, Unites Kingdom, Korea, Japan, Singapore, the European Patent Office and all the of the Patent Cooperation Treaty Offices (PCT). Any of these offices are eligible to serve as an OFF or an OSF.
In order to be eligible to apply for a U.S. patent with the PPH program, patentable claims must have been found by the patent office of the initial country where the original patent application was filed. In addition, all claims must have a similar scope to those cited on the OFF application, and an examination of the application in the U.S. must not have already begun. Verified English translations of all claims must also be provided to the USPTO, along with a chart proving how the claims in the U.S. application sufficiently correspond with the initial claims. Furthermore, all the documents produced by the foreign office must be submitted with an Information Disclosure Statement (IDS).
While the PPH program has obvious benefits, it also comes with a major drawback in the form of claims restrictions. Claims cannot be narrowed during the PPH prosecution unless those new limitations are present in one of the claims at the time the PPH request was granted. This means that any Office Action that deems a claim “unpatentable” cannot be responded to by narrowing the claims. New claim limitations can only be introduced by filing a continuation application, which requires additional time and money.
Overall, despite its downside that restricts claims from being reduced, the PPH program can be an efficient and effective method for obtaining patent rights in additional countries. Depending on the inventor’s strategy and the invention itself, it may very well be an option worth considering.