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What is PPH (Patent Prosecution Highway)? …. Why PPH? ….All that you need to know
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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.
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Sl No. |
PROs |
CONs |
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1. |
Time taken for examination shall be lesser. |
The claims cleared by OFF are set as the limitation for the claims applied in OSF |
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2. |
Advantageous for cross-licensing negotiations |
Negative comments by the examiner in an OSF may be used during litigation against patent granted in OFF. |
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3. |
Reduces overall costs |
Compromises the OSF examination quality by reducing the number of prior arts that could have been examined. |
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.
We hope this article was a useful read.
Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-Non Commercial 3.0 Unported License
Patent Prosecution Highway between the Indian Patent Office and the Japan Patent Office
The Indian Patent Office (IPO) and the Japan Patent Office (JPO) has commenced a pilot bilateral Patent Prosecution Highway (PPH) program and will begin accepting PPH requests from December 05, 2019.
Under the PPH program, examination of a patent application can be expedited in the IPO if at least one claim of a corresponding patent application in the JPO is indicated to be allowable, and vice versa.
Notably, the number of applications considered under the PPH program by each office is currently limited to 100 applications per year. Additionally, the IPO has limited the number of applications per applicant to 10 in a year.
Some of the other nuanced aspects of interest to patent applicants who are considering opting for the PPH program in India are discussed below.
Field of patent application
The IPO has limited this program to patent applications in the technical fields of electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles and metallurgy. The JPO on the other hand does not have such restrictions.
Priority of patent application
The Indian patent application sought to be considered under the PPH should have its earliest priority claim from an application filed at the IPO or the JPO. Further, in case the earliest priority is from a PCT application, then the PCT application should be filed with the IPO or the JPO as the receiving office.
Status of claim
The Indian patent application can to be considered under the PPH if a patent is granted to the corresponding Japanese patent application or at least a claim in the corresponding Japanese application is indicated to be allowable.
Status of examination
The Indian patent application should not have been allotted for examination for the application to be considered under the PPH program.
Documents required
The below listed documents are required for making a request under PPH.
- All the office actions issued by the JPO (with translation in English)
- Claims patented or identified to be allowable/patentable by the JPO (with translation in English)
- Copies of non-patent literature cited in the office actions issued by the JPO
- Claim correspondence table
The claim correspondence table should show how all the claims of the Indian application (as filed or amended) correspond to, or at least “sufficiently correspond” to the claims granted or indicated to be allowable by the JPO.
It shall be noted that the phase “sufficiently correspond” has been defined in the guidelines to include those claims that are narrower than the claim granted/allowable by the JPO. In view of this definition, it is our view that, as long as the independent claim in the IPO application is practically identical or narrower in scope compared to the claim patented or indicated as allowable by the JPO, the dependent claims of the IPO application need not as such “correspond” to any other claims of the JPO application. The reason for the instant view is that the dependent claims are in any case narrower claims compared to the independent claim, and hence they automatically “sufficiently correspond” to the claim patented or indicated as allowable by the JPO.
Procedure
Step 1
A request must be filed with the IPO for participating in the PPH program. The request is made by presenting documents as discussed above. The IPO examines the request to decide whether the patent application can be assigned special status for expedited examination under PPH program.
In case the IPO determines that the request does not meet the requirements set forth for participating in the PPH program, then the applicant is notified of the same. The applicant has 30 days to rectify the defects. The IPO then considers the rectification and make a final decision as to assignment of special status to the application.
Step 2
The patent applicant can make a request for expedited examination once the IPO assigns a special status to the patent application for participating in the PPH program.
In conclusion, the pilot program is a welcome step towards making India an attractive destination for innovative companies. The success of this pilot program may open doors for establishing similar programs with other countries.
Useful download: Procedure guidelines for patent prosecution highway
I hope you found our article informative.
Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
