Patent Prosecution Highway Overview

Objectives to know about Patent Prosecution Highway (PPH) specific to the AIA

• Understand the AIA’s implementation of PPH
• Identify the key laws and rules (37 CFR and 35 USC) pertaining to PPH specific to the AIA
• Apply the laws and rules pertaining to PPH specific to the AIA to real-world scenarios

Key Laws and Rules (37 CFR and 35 USC) pertaining to Patent Prosecution Highway specific to the AIA

• 35 U.S.C. § 311(c): Patent Prosecution Highway
• 37 CFR § 1.102: Patent Prosecution Highway (PPH)

Comprehensive, detailed, e-learning module content for Patent Prosecution Highway specific to the AIA

Module 1: Introduction to Patent Prosecution Highway

This module will introduce the Patent Prosecution Highway (PPH). It will discuss the purpose of PPH, the benefits of PPH, and the requirements for participating in PPH.

Purpose of PPH

The purpose of PPH is to expedite the examination of patent applications by allowing applicants to rely on the work that has already been done by other patent offices.

Benefits of PPH

The benefits of PPH include:

• Reduced patent examination time
• Increased likelihood of obtaining a patent
• Reduced patent prosecution costs

Requirements for participating in PPH

To participate in PPH, an applicant must:

• Have a patent application that is pending in at least two participating patent offices
• Have received a favorable patentability determination from at least one participating patent office

Module 2: Applying the laws and rules pertaining to Patent Prosecution Highway specific to the AIA to real-world scenarios

This module will discuss how to apply the laws and rules pertaining to PPH specific to the AIA to real-world scenarios. It will cover common issues that arise in connection with PPH and how to address those issues.

Common issues

Some common issues that arise in connection with PPH include:

• Whether the applicant meets the requirements for participating in PPH
• How to file a PPH request
• How to respond to a PPH request
• How to maintain eligibility for PPH

The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating countries by allowing examiners to reuse search and examination results.

Background

1. Half US applications come from outside US. Other countries’ patent office’s often deal with same materials as in a US patent.
   1. 25-30% of worldwide applications are in common among the IP5 (countries)
2. Once you have allowed claims in one country, the PPH makes it easier/faster to get a patent in other countries by re-using the search and examination results from earlier allowed claims
3. Just look up Global and IP5 PPH participating countries during exam in Federal Register
4. There are many ways to jump your application ahead out of turn:
   1. Pre-August 2006 – free and fee based
   2. Post – age and illness (both free and automatic with proof); free (energy, environmental, terrorism, but these had all the hoops to jump through)
   3. AIA “Track 1” –
   4. $ for fast exam; limited number of applications (10,000)
   5. Pilot programs – green energy, small business, etc.
      1. PPH is a pilot program that keep getting renewed so it is now in the exam

The Patent Prosecution Highway Pilot Programs

The PPH enables an applicant who receives a positive ruling on claims from one participating office to request accelerated prosecution of corresponding claims in another participating office. The PPH promotes efficiency by allowing the examiner in the office of the later examination (OLE) to reuse the search and examination results from the office of the earlier examination (OEE). There are multiple PPH pilot programs, including the Global PPH and the IP5 PPH, differing mainly in their participating offices. For example, the IP5 PPH includes the US, Europe (EPO), Korea (KIPO), Japan (JPO), and China (SIPO). The US also participates in the Global PPH.

For example, suppose you file in Japan first, then US, etc.

1. Take indication of allowance from earlier examination office & take it office of later examination (US)
2. Show USPTO that Japan issued Notice of Allowability for one or more claims that are “substantially the same” as you have filed in the US
3. Then your application jumps to front of line and examination begins
4. Examiner may or may not rely on earlier examination merits – standards for patentability may be different depending on earlier examination country

Trial Period

1. Both started on January 6, 2014
2. IP5: three year periods, extended in 2016 by three years
3. Global: one year periods, extended indefinitely

Eligibility

1. Earlier application was in another Global/IP5 PPH office (or PCT filing date if Global/IP5 participant was the ISA or IPEA)
2. Both share a common “earliest” date (i.e., priority or filing date). Be careful with CIP new claims if later priority date.
3. At least 1 allowed claim
4. All claims in later US application must sufficiently correspond to earlier allowed/patentable claims in scope
   1. Later US claim must be the same or narrower than the earlier allowed claims and of same type (e.g., earlier product claims don’t help even with narrower product claims in later application)
5. Substantive examination in US has not yet begun (or else there would be nothing to speed up)
   1. Note: Notice to File Missing Parts or Restriction Requirements are not really substantive examination yet

Request Requirements

1. Must submit by EFS
2. Request to participate in PPH and for US to advance application out of turn (Rule 1.102(a))
3. No fee
4. claims correspondence table (w/ English translation if necessary) and certification that the US application claims correspond to allowed claims
5. last office action before allowance from earlier office (w/ English translation if necessary)
6. most recent work product in the international phase of PCT application (if applicable) (w/ English translation if necessary)
7. no need for the last two items if they are already in US application file or available on Dossier or WIPO
8. IDS listing all cited documents from earlier office’s and/or PCT’s examination
9. Copies of all cited documents from earlier office’s and/or PCT’s examination (with English explanations of relevance if necessary), except US patents and patent application publications and anything already submitted in the US application file
10. Notice of Allowability from earlier patent office (w/ English translation if necessary)
11. If request is incomplete, applicant receives notification and given 1 opportunity to fix it (but if examination begins before you fix, then there’s no point so your renewed/corrected PPH request will be dismissed)

Miscellaneous

1. Granted PPH request carries over to RCE, but not from parent to continuation/divisional/CIP
2. Amendments/addition of claims after PPH grant – must provide statement that new claims sufficiently correspond to earlier allowed claims
3. Still have duty of good faith, candor, and disclosure of information known to be material to patentability
4. PPH request is usually decided within 2 months of request & examination begins within another 2-3 months
5. Errors discovered in PPH request after submission: submit new request by EFS (or in reply if already granted/denied) and transmittal letter explaining corrected errors
6. PPH has no limit to number of cases (Track 1 has 10,000 case limit)
7. Machine translations are okay
8. PTA and extensions under 1.136(a) are both available for applications examined after a PPH request