Patent Offices across the globe have come up with various bilateral agreements to promote work-sharing and enable accelerated prosecution of patent applications at the office of second filing (OSF).

Pic: Global PPH status as of November 12, 2020(Courtesy: WIPO)

Patent Prosecution Highway (PPH) is one such bilateral agreement signed between the participating countries to reduce the search/examination burden and enhance the quality of examination in major patent offices in the world. PPH was first developed between the USPTO and JPO and the corresponding Pilot program commenced on July 03, 2006. The PPH enables reduction in patent application redundancy in partner patent offices, accelerates the process to provide expedited patent prosecution with better allowance rate and significant cost reduction mechanism.

PPH can be opted for applications that satisfy the following criteria:

• The patent application should not have been filed that recently that the prosecution in the Office of First Filing (OFF) has not reached a successful conclusion; and
• The patent application should not have been filed that long ago that the examination as already begun at the OSF.

Hence, Applicant wishing to avail the benefits of PPH must keep abreast the prosecution status of the related patent application in OFF and the OSF countries such that once the OFF issues allowance, the Applicant can request for PPH before the patent application is allotted for examination in the desired OSF.

 Some Effective Strategies to make the most of PPH may include:

• Identify eligible pairs of OFF and OSF
• Identify the potential future OFF and OSF patent applications before the program starts.
• Identify patent applications for PPH that are divisional applications in the OFF. If the OFF of the divisional patent application is USPTO then the first set of claims can be applied via PPH route in the OSF and the other set of claims can be filed as a continuation patent application for conventional prosecution at a later stage. This enables preservation of broader claims.

The Patent Prosecution Highway (PPH) pilot program between Indian Patent Office (IPO) and Japan Patent Office (JPO) begins on December 07, 2020. The IPO has issued the guidelines for submitting the request for entering the IPO under the PPH program that is elaborated HERE.

The Applicant may note the following points while considering the PPH to enter the IPO from JPO:

• Number of requests for the PPH in IPO is limited to 100 per year (based on first come first basis).
• An Applicant may file not more than 10 PPH requests per year,
• Request for assigning special status for expedited examination must be filed online using FORM 5-1 under the chapter 5 of PPH guidelines,
• In case defects are notified by the IPO in Form 5-1, the Applicant will be given 30 days as time period to rectify the same.
• Applicant may request for expedited examination on Form 18A only after the IPO has accepted the request for assigning special status for expedited examination filed on form 5-1 as prescribed in chapter 5 of PPH guidelines.
• Notwithstanding the above procedure, the timelines for filing a request for expedited examination will be as prescribed under the Patent Rules, 2003.

PPH enables both powering up the patent prosecution process as well as weakening the global patent system in different ways. However, one can monetize based on the advantages of using PPH by consulting a qualified Patent Counsel for reviewing their patent application and identify strategies for maximizing the potential benefits of PPH programs.

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