The Patent Prosecution Highway (PPH) has proven to be a successful vehicle enabling faster and less expensive global patent prosecution.  The PPH began as a small pilot project in 2006 between the U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office, and has grown in the last few years as applicants become more comfortable with the process.

In its original version, the PPH provides a framework that allows applicants to request expedited examination, in an office of second (or subsequent) filing, of an application whose claims have been determined to be patentable in an office of first filing.  Under this scheme, the favorable examination results have to be issued by the office of first filing before any of the other offices can accept PPH requests.  Currently, the USPTO has PPH agreements with the European Patent Office (EPO) and with the patent offices of Australia, Austria, Canada, China, Colombia, the Czech Republic, Denmark, Finland, Germany, Hungary, Iceland, Israel, Japan, Korea, Mexico, Nicaragua, Norway, the Philippines, Portugal, Russia, Singapore, Spain, Sweden, Taiwan, and the United Kingdom.

A disadvantage of the original PPH program, however, is that applicants cannot take advantage of the PPH if the first favorable examination results are from an office of second filing.  To address this shortcoming, eight patent offices agreed to launch an enhanced PPH program called PPH MOTTAINAI.¹  The participants in the first PPH MOTTAINAI program were the United States, Australia, Canada, Finland, Japan, Russia, Spain, and the United Kingdom.  PPH MOTTAINAI allows requests for expedited examination on the basis of an indication of allowable/patentable subject matter, from a participating office, regardless of whether the positive outcome is from an office of first filing.  The EPO and the patent offices of Germany, Portugal, and Denmark have recently joined PPH MOTTAINAI.²

In the past year, the USPTO implemented an updated version of PPH MOTTAINAI, commonly referred to as PPH 2.0, with the goal of attracting more applicants by simplifying the requirements and procedures. The simplified requirements apply to PPH requests filed in the USPTO on or after January 29, 2012, for U.S. applications on which examination has not begun.  Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded from the program.  Requests for participation in the PPH 2.0 program must be filed via EFS-WEB.  No fees are associated with the filing of a request.  A request for participation in the program, and the special status granted, carries over to a Request for Continued Examination (RCE) of the application.  But, a request for participation and special status granted in a parent application will not carry over to a continuing application.

To be eligible to participate in the PPH 2.0 program, at least one claim in a patent application must have been determined to be allowable/patentable by one of the foreign participating offices.  The applicant no longer needs to submit a copy, or English translation, of the allowed claims or decision to grant from the application in the foreign participating office.  The applicant must, however, submit a copy of the last office action (and English translation thereof) issued prior to the decision to grant a patent (assuming the application was not allowed in a first office action).³  An Information Disclosure Statement (IDS) listing the documents cited in all the office actions from the foreign participating office and copies of the cited documents are also required. 

The U.S. application and the application from the foreign participating office upon which the request is based must also have the same priority or filing date.

The claims in the U.S. application must sufficiently correspond to one or more of the allowable/patentable claims in the application in the foreign participating office.  A claim sufficiently corresponds where the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable/patentable. Differences in the claims due to translation and claim format are acceptable.  A claim in the U.S. application that introduces a new/different category of claims is not considered to sufficiently correspond.  For example, if the only allowable/patentable claims in the foreign application are claims to a process of manufacturing a product, then any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims that sufficiently correspond to the allowable/patentable claims.

Claims in the U.S. application with narrower scope than the allowable/patentable claims in the foreign participating office will also sufficiently correspond if presented as claims dependent from a claim that is of the same or similar scope as the allowable/patentable claim in the foreign participating office.  Any additional limitations that narrow the scope of the U.S. claims must have support in the written description of the U.S. application.  The applicant is required to submit a claims-correspondence table in English indicating how all the claims in the U.S. application correspond to the allowable/patentable claims in the foreign participating office.

If the request for participation in the program is granted, the U.S. application will be advanced out of turn for examination.  The applicant is required to submit, along with any subsequent amendment, a statement certifying that the amended or newly added claims sufficiently correspond to the allowable/patentable claims in the foreign application.  If the certification statement is omitted, the amendment will not be entered and will be treated as a nonresponsive reply.

If the request for participation is defective, the applicant has one opportunity to cure the defects by filing a renewed request.  If the request is not perfected, the applicant will be notified and the application will await action in its regular turn.  Action on the application by the USPTO is not suspended while the applicant corrects any defects.  Thus, if a first substantive action is issued before the filing of a renewed request, the renewed request will be dismissed.

USPTO statistics for the first half of 2013 show that PPH applications prosecuted under the PPH enjoyed more compact prosecution.  PPH applications have an 86% grant rate, and have an average pendency, from PPH request to final decision, of 11.4 months, which is impressive when compared to the 30.7 months pendency for non-PPH applications.  With the good results and simplified procedures offered in PPH 2.0, practitioners should keep this tool handy for advancing prosecution.

¹ MOTTAINAI is a Japanese term conveying a sense of regret concerning waste.

² Detailed procedures and other information available at the PPH portal site, http://www.jpo.go.jp/ppph-portal/links.htm (last visited Oct. 29, 2013).

³ The applicant may alternatively request that the USPTO obtain a copy of the office action and its English translation via the dossier access system, if available. See Revised Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with Participating Offices, Official Gazette of the United States Patent and Trademark Office (Mar. 6, 2013) available at http://www.uspto.gov/web/offices/com/sol/og/2012/week10/TOC.htm#ref15 (last visited Oct. 29, 2013).