For accelerating patent applications between countries, there is the Patent Prosecution Highway (PPH). If you have a notice of allowance or an allowed patent in one country, the PPH may be used to accelerate patenting your invention in other countries.
Patent Prosecution Highway
The Patent Prosecution Highway (PPH) is a program established between patent offices in different countries to expedite the examination process for patent applications. Under the PPH program, when an applicant receives a favorable examination decision from one patent office, the applicant may request expedited examination of a corresponding patent application in another participating patent office. To find out more information on expedited patent processes, check out our article accelerated examination patent applications. The PPH program process is suitable for all utility, design, or plant patent applications after you receive a notice of allowance or your patent issues.
The Patent Prosecution Highway PPH Process
Before beginning the PPH process, it is important to note that the requirements and procedures for filing for PPH may vary by participating patent office. Therefore, it is advised to consult the specific guidelines and requirements of the patent office where you are filing. Additionally, it is recommended that you seek the advice of a patent attorney or patent agent to assist with the PPH filing process.
The first step in filing for the Patent Prosecution Highway (PPH) is determining if your application is eligible for the program. Each participating patent office may have specific eligibility requirements, but generally, the following criteria must be met:
- The application must be filed with, and have been examined by, a participating patent office.
- The application must contain claims that have been determined to be patentable or allowable by the participating patent office.
- The corresponding application must be filed with a second participating patent office within a specified time limit, which may vary by patent office.
If you have determined that your application is eligible for the Patent Prosecution Highway program, you will need to file a request for PPH examination with the second participating patent office. The request should include information about the corresponding application including the application number, filing date, and status. When filing, it is required to submit supporting documents. These supporting documents can include copies of the allowed claims from the first participating patent office or any other relevant documents that may assist in the examination process.
Once supporting documents are submitted and the request is filed, the next step is to wait for a decision from the second participating patent office regarding whether the Patent Prosecution Highway request has been granted. If the request is granted, the patent examination process will be expedited.
Benefits of Patent Prosecution Highway PPH
The program aims to improve the efficiency of the examination process, reduce pendency, and enhance the quality of granted patents. By utilizing the search and examination results of the first patent office, the second patent office can leverage the work already done and expedite its own examination.
The Patent Prosecution Highway program can be particularly beneficial for companies and inventors seeking patent protection in multiple jurisdictions as it can help to expedite the examination process and reduce costs associated with preparing and prosecuting patent applications. There are no fees associated with the PPH program. This gives inventors and innovators a fair chance at being granted an expedited patent examination. The program is currently offered by several major patent offices around the world including the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) among others.
Global Patent Prosecution Highway (GPPH)
The Global Patent Prosecution Highway (GPPH) is an initiative that aims to simplify and streamline the process of obtaining patents in multiple jurisdictions. It is a network of participating patent offices from around the world that have agreed to share information and work together to expedite the examination process for patent applications. The GPPH program includes many major patent offices from around the world including the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Intellectual Property Office of Singapore (IPOS), the Canadian Intellectual Property Office (CIPO), and the Australian Patent Office (IP Australia) among others.
“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”
United States Patent and Trademark Office (USPTO) Patent Prosecution Highway (PPH)
Under the GPPH program, if an applicant receives a favorable examination decision (notice of allowance or issue) from a participating patent office, the applicant may request expedited examination of a corresponding patent application in any of the other participating patent offices. This allows for a more efficient and cost-effective process for obtaining patents in multiple jurisdictions.
To participate in the GPPH program, the applicant must first file a patent application with a participating patent office and receive a favorable examination decision. The applicant can then request expedited examination in any of the other participating patent offices by submitting a request and supporting documents.
It is important to note that the eligibility requirements and procedures for filing under the GPPH program may vary by participating patent office, so it is always best to consult the specific guidelines and requirements of the patent office where you are filing. Additionally, it is recommended that you seek the advice of a patent attorney or agent to assist with the GPPH filing process.
IP5 Patent Prosecution Highway (IP5 PPH)
The IP5 is a group of the five largest patent offices in the world including the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of China (SIPO). The IP5’s Patent Prosecution Highway (IP5 PPH) is a specific program that allows applicants to request accelerated examination in participating patent offices that are members of the IP5. The IP5 offices launched the comprehensive IP5 PPH on 6 January 2014. In 2019, it was agreed to extend the duration of the pilot program by three years commencing on 6 January 2020.
The IP5 PPH program aims to streamline the patent examination process by allowing applicants to leverage the search and examination results from a first participating patent office when filing for accelerated examination in a second participating patent office. This helps to reduce examination time and costs, as well as to enhance the quality of granted patents.
To be eligible for the IP5 PPH program, an applicant must have a corresponding application filed and examined in a first participating patent office and the claims must be found to be allowable or granted. The applicant must then submit a request for accelerated examination in a second participating patent office and provide the necessary documents and information to support the request.
It is important to note that each participating patent office may have specific eligibility requirements and procedures for filing under the IP5 PPH program, so it is always best to consult the specific guidelines and requirements of the patent office where you are filing. Additionally, it is recommended that you seek the advice of a patent attorney or agent to assist with the IP5 PPH filing process.
4 Benefits of using the Patent Prosecution Highway Program
The Patent Prosecution Highway (PPH) program provides several benefits to applicants seeking patent protection in multiple jurisdictions. Here are some examples of how the PPH can be beneficial:
- Accelerated Examination: The PPH allows an applicant to request an accelerated examination of their application in a participating patent office based on a positive examination result received from another participating patent office. For example, an applicant who receives a positive examination result from the United States Patent and Trademark Office (USPTO) can request an accelerated examination of their application in the Japanese Patent Office (JPO) through the PPH. This can result in a faster grant of a patent in Japan.
- Increased Efficiency: The PPH can improve the efficiency of the patent application process by reducing the duplication of efforts and resources in different patent offices. For example, an applicant who has already completed examination in one participating patent office can use the results to streamline examination in another participating patent office. This can result in a more efficient examination process and reduce the overall costs of obtaining patents in multiple jurisdictions.
- Reduced Costs: The PPH can also reduce the costs associated with prosecuting a patent application in multiple jurisdictions. For example, an applicant who has obtained a positive examination result in one participating patent office can use the results to expedite examination in another participating patent office, thereby reducing the overall costs of prosecuting the application.
- Increased Certainty: The PPH can increase the certainty of obtaining a patent in multiple jurisdictions. For example, an applicant who has already obtained a patent in one participating patent office can use the positive examination result to expedite examination in another participating patent office, thereby increasing the likelihood of obtaining a patent in that jurisdiction.
Overall, the PPH program provides several benefits for applicants seeking patent protection in multiple jurisdictions, including faster processing, increased efficiency, reduced costs, and increased certainty. These benefits can help applicants obtain patents more quickly and cost-effectively in multiple jurisdictions.
3 Disadvantages of using the Patent Prosecution Highway Program
While the Patent Prosecution Highway (PPH) program provides several benefits to applicants seeking patent protection in multiple jurisdictions, there are also some potential disadvantages to consider, including:
- Limited Availability: The PPH program is currently only available in certain countries, and not all jurisdictions participate in the program. For example, the PPH is currently only available between the USPTO and certain other patent offices, such as the European Patent Office (EPO) and the JPO. This limited availability can make it difficult for applicants to use the program in certain jurisdictions.
- Narrow Eligibility: The eligibility requirements for the PPH program can be narrow, and not all patent applications may qualify for the program. For example, an application may be excluded from the program if it has already been granted a patent in another jurisdiction or if it has been filed under certain national or regional laws. This can limit the ability of some applicants to use the program.
- Increased Costs: While the PPH program can reduce costs for some applicants by expediting examination in certain jurisdictions, it can also result in additional costs associated with preparing and filing requests for expedited examination. Additionally, the program may require additional fees and costs associated with translations or other administrative tasks.
Overall, while the PPH program can provide several benefits to applicants seeking patent protection in multiple jurisdictions, it is important to consider the potential disadvantages and limitations of the program, including limited availability, narrow eligibility, limited scope, and increased costs. Applicants should carefully evaluate their options and consult with legal counsel before deciding whether to use the PPH program for their patent applications.