General overview of the Patent Prosecution Highway (PPH) Program

05.09.2016

Oliver Piter

Patenting an invention may require, depending on the jurisdiction, several prerequisites and conditions to fulfill in order to fully comply with the local regulations, which alongside to the examination backlog in each jurisdiction, would result in a considerable delay in the process of obtaining protection for a specific invention.

Therefore, in the stated purpose of reducing the backlog of examination within the National Patent Offices as well as the timeframe between the actual filing date of an application and the date of obtaining the granted patent, the major Patent Offices around the globe agreed to set up a program whose purpose is to allow Applicants to obtain protection for their innovative ideas earlier than normally expected. Once the implementing procedures were finalized, the program became known as the Patent Prosecution Highway (PPH) Program.

The main characteristic of the Patent Prosecution Highway (PPH) Program is that it allows the Applicant to use the examination results in one Patent Office to accelerate the examination in another Patent Office, provided that the respective Offices have an agreement in this regard. More specifically, an Applicant may request accelerated patent prosecution in one jurisdiction based on the positive results of the examination in another jurisdiction, on the condition that at least one claim has been found to be patentable in the application already examined.

There are various types of Patent Prosecution Highway (PPH) Agreements between several Patent Offices. Each type of agreement has its own specifics and a thorough analysis of the same will aid the Applicant to determine the specifics of the application that can serve as the basis of a PPH request, submitted to each of the participating authorities, if required.

While under the regular PPH, the Applicant is enabled to request the Office of Second Filing (OSF) to fast-track examination based on the examination results of the Office of First Filing (OFF), under the PCT-PPH agreement, the Applicant is enabled to request accelerated examination by a second patent office when an International Searching Authority (ISA) or an International Preliminary Examining Authority (IPEA) has submitted a positive Written Opinion or a positive International Preliminary Report on Patentability (IPRP), identifying at least one claim to be patentable.

Through the joint effort of the major Patent Offices, further PPH Pilot Programs have been developed, such as the Global PPH and IP5 PPH, being substantially identical, differing only regarding the participating offices.

Accessing the PPH Program is not done automatically, but only upon specific request by the Applicant, which is also bound to provide specific documents and to fulfill certain conditions, such as the qualifying relationship between the applications, having at least one claim deemed to be patentable in the Office of First Filing or to provide copies of all relevant documents issued during the examination of the first application.

Important to note is that the requirements for participating to the Patent Prosecution Highway (PPH) Program are subject to change, and it is therefore advisable to check the requirements set out in a particular agreement before making use of the PPH under said agreement.

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