As many patent practitioners are aware, substantial redundancy exists in the worldwide prosecution of patent applications. The Patent Prosecution Highway (PPH) is intended to reduce this redundancy by allowing the patent office in a country of second filing to take advantage of the work of the patent office in the country of first filing. When a PPH alliance is in place, an office of second filing (OSF) can use the search results from the office of first filing (OFF) to accelerate their examination. Additionally, because only allowed claims from the OFF are eligible for examination in the OSF, claim amendments have usually already been made to distinguish over the relevant prior art, further accelerating prosecution of PPH applications.
Over the past several years, PPH programs have increased allowance rates and reduced the number of office actions in the OSF. For example, the United States Patent and Trademark Office (USPTO) has reported a PPH application allowance rate of about 94% (more than double the usual allowance rate), while the average number of office actions for PPH applications has been halved. Similarly, the Canadian Intellectual Property Office (CIPO) has reported that approximately 35% of PPH applications were deemed allowable without an examiner’s report, and many of the remaining PPH applications resulted in an examiner’s report that merely required correction of informalities. In light of the benefits to the patent offices and applicants alike, the trial PPH program established between the USPTO and CIPO in January 2008 was made permanent as of January 29, 2011.
While relying on the PPH program can lead to clear advantages such as expedited prosecution and early enforcement (which may be critical in rapidly evolving technologies), the PPH program is not without its drawbacks. For example, there is only a narrow window of opportunity for entry into a PPH program such that applicants must keep abreast of the prosecution status of their cases in both the OFF and OSF. Additionally, there is a risk that none of the claims allowed under the patent laws of the OFF will be allowable under the patent laws of the OSF, for example, due to differences in the jurisdiction’s determination of patent eligible subject matter. Moreover, amendments made during prosecution in the OFF might narrow the claims more than would be required in the OSF.
Accordingly, while PPH programs may offer important benefits such as accelerated patent issuance, higher allowance rates, and significant cost savings, an applicant should contact qualified patent counsel who can review their portfolio to help identify strategies to maximize the benefits of PPH programs.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
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