Speed Up Patent Prosecution? Think PPH

The USPTO implemented the Patent Prosecution Highway (PPH) back in May of 2010. It has been around for a while but sometimes a forgotten tool in some technology fields. The PPH is a work-sharing arrangement between national and regional patent offices enabling an applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office. The objective is to save time and money. For example, for FY22 (Oct 2021 – Sept 2022), in participating patent offices with at least 100 petitions filed,[1] the average pendency in days from petition to a First Action was 144 (roughly 4.8 months).[2] By comparison, the USPTO First Office Action Pendency averages about 16 months.[3]  Currently, there are 55 national and regional patent offices countries participating in the Global PPH. See https://www.jpo.go.jp/e/toppage/pph-portal/network.html.  

The USPTO also participates in bilateral PPH agreements with patent offices in several countries and regions. See https://www.uspto.gov/patents/basics/international-protection/patent-prosecution-highway-pph-fast-track. Most recently, the USPTO entered into bilateral PPH pilot programs with Morocco (effective April 1, 2023), Malaysia (effective March 2, 2023 to March 3, 2026), France (effective Dec. 1, 2021 to Nov. 30, 2024), and Brazil (effective Dec. 1, 2019 to Nov. 30, 2024).

In addition, there is a IP5 PPH pilot program among IP5 offices: the USPTO, the China National Intellectual Property Administration (CNIPA), the European Patent Office (EPO), the Japan Patent Office (JPO), and the Korean Intellectual Property Office (KIPO). The IP5 PPH pilot program allows an applicant whose claims have been allowed by one IP5 office to have the corresponding application filed in another IP5 office advanced out of turn for examination.

On January 30, 2023, the IP5 offices agreed to extend the pilot until January 5, 2026. The European Patent Office (EPO) announced that it is making the IP5 PPH pilot program permanent.

As of August 31, 2023, roughly 88,354 applications with petitions have been filed with the USPTO through the PPH program. Of these, there have been 78,944 applications with petitions granted.[4]

Your USPTO patent application is eligible for PPH if:

1) Your USPTO application shares a common earliest priority date with a related application from a partnering PPH office (http://www.uspto.gov/patents/init_events/pph/index.jsp);

2) You have received an indication of allowability for at least one claim in the related application;

3) All claims in your USPTO application sufficiently correspond (see Question 27 below) to allowable claims in the related application; and

4) Substantive examination has not begun on your USPTO application.  If you have received a restriction requirement in the U.S. application, your U.S. application may still be eligible to participate in the PPH program if the examiner has not started on the first action on the merits.[5] 

Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are not eligible for the PPH program.[6]

Endnotes

[1] Patent Offices in Canada, China, Europe, Japan, Korea, UK, and US.

[2] Source: https://www.uspto.gov/sites/default/files/documents/PPHQuarterlyStatisticsDataFY2021.pdf.

[3] Source: https://www.uspto.gov/dashboard/patents/pendency.html.

[4] Source: https://www.uspto.gov/sites/default/files/documents/PPHQuarterlyStatisticsDataFY2021.pdf.

[5] Source: https://www.uspto.gov/sites/default/files/documents/FAQs-for-PPH-revised-05032023.pdf.

[6] Source: https://www.uspto.gov/sites/default/files/documents/FAQs-for-PPH-revised-05032023.pdf.