Guide to the IP5 Patent Prosecution Highway Pilot
The IP5 Patent Prosecution Highway (PPH) is a pilot programme between the five largest IP offices (Europe, Japan, Korea, China and the US) to allow faster and more efficient examination. The PPH allows these five offices to exploit search and examination reports (‘work products’) previously issued by another IP5 office.
Is my application eligible for the PPH?
The IP5 PPH programme enables an application filed at a participating office, ie, an Office of Later Examination (OLE), to benefit from fast-tracked examination based on work products issued in respect of a corresponding application made in another IP5 office, ie, an Office of Earlier Examination (OEE). The OEE application can be a national application or a PCT application for which one of the IP5 offices acted as International Searching Authority (ISA) and/or International Preliminary Examining Authority (IPEA).
The following eligibility criteria are generally applicable, with minor variations in the different IP5 offices:
1. The OLE application must have the same earliest date (ie, priority or filing date) as the OEE application.
2. The OEE application must have at least one claim indicated by the OEE to be patentable/allowable.
3. All claims must ‘sufficiently correspond’ to the claims indicated by the OEE to be patentable/allowable. Claims are generally considered to sufficiently correspond if they are of the same or similar scope or of a narrower scope (ie, include a limitation of an additional feature supported by the application). Claims of a different category are not considered to sufficiently correspond.
4. Substantive examination of the OLE application has been requested at the same time or before filing the request, but examination has not begun.
Time frame of the programme
The pilot programme is scheduled to run from 06 January 2014 until 05 January 2017, although this period can be terminated or extended if necessary.
What are the benefits of the PPH?
Based on the available statistics , on average, the PPH route results in:
• Higher grant and first action allowance rates.
• A significantly reduced wait for a first office action.
• Significantly reduced periods to a final decision.
• Reduction of numbers of office actions.
For the applicant, this means:
• Potential for significant savings in prosecution costs.
• Generally faster grant.
• The PPH may provide the only route for accelerating examination in some patent offices.
Does the PPH have disadvantages?
Although there is no official fee to request PPH, there are other potential costs. These include: obtaining translations of the work products of another IP5 office, such as examination reports (although machine translations can generally be filed initially and accurate translations can be provided later if requested) and paralegal and attorney costs for compiling and preparing the necessary documentation.
The requirement of the claims to have sufficient correspondence may be too restrictive to the applicant, since this could result in narrower claims in all countries compared with separate prosecution in each country. However, it may be possible to pursue broader claims by way of filing separate divisional or continuation applications (although this obviously increases costs).
There is only a narrow window for filing the request – it must be before substantive examination of the OLE application has begun, but after the OEE application has been examined.
The PPH is an initiative that enables work-sharing between the offices; it is not a mutual recognition programme. IP offices typically have different criteria for assessing unity, clarity, sufficiency, and even inventive step, so a consistent outcome is not guaranteed, even where the claims sufficiently correspond.
At the United States Patent and Trademark Office (USPTO), PPH applications are likely to result in no patent term adjustment (PTA) benefit.
Typical scenario
“We have received a positive examination report or positive WO-ISA/IPER/IPRP from one of the IP5 offices - should we go ahead and use the IP5 PPH pilot programme?”
Yes: We are happy with the allowable claims, and would like the application granted as quickly as possible.
We have a lot of applications and often receive a positive examination report or positive IPRP/ WO-ISA/IPER, and would like to streamline our patent prosecution procedures and save costs.
The allowable claims are narrow, but for commercial reasons (eg, we have a potential licensee or we need a granted patent to obtain funding, or the product we want to market is covered by the allowable claims), we are happy to have a patent granted quickly with these claims, but we intend to file divisional or continuation applications to pursue broader subject-matter.
No: We are concerned that the allowable claims are too narrow and would like to try to obtain broader protection.
We have not yet decided on our patent strategy and may wish to file divisional/ continuation applications - we would like more time to consider these.
We are waiting for funding and would like to keep our options open, and would not wish to pay validation costs for an EP application or maintenance fees until we have secured funding.
Application supporting documentation
The following document list is generally applicable for filing the request, although there may be additional documentation required depending on the IP5 office:
1. Request form.
2. Declaration or table showing the claims correspondence.
3. Copy of the office action(s) or PCT work product (eg, a positive IPRP, or positive WO-ISA or positive IPER) from the OEE application(s) and translation where applicable.
4. Copy of the patentable claims and translation where applicable.
5. Copies of non-patent documents cited in the office action(s) or PCT work product.
Fees for application
There is no official fee for requesting participation in the IP5 PPH pilot programme.
Procedure for grant or refusal
The OLE will consider whether the request meets the requirements. The applicant will be notified of any deficiencies in the request, and will be given one opportunity to correct these. If the request is granted, the application will be eligible for fast-track examination. If the request is not granted, the application will proceed as a normal application.
What are the timescales?
The application will receive priority treatment for prosecution at the relevant IP5 office. However, the speed at which the application will be dealt with depends on the office. For example, the EPO will treat the application in accordance with the existing accelerated examination procedure under the ‘PACE’ guidelines (eg, issuance of an examination report typically within three months of the allowed request). However, whilst the other IP5 offices may provide similar guidelines, there are no strict time limits that the examiners are obliged to meet. Average statistics for some offices are shown in figure 1. Obviously, the applicant can also accelerate the procedure by responding to any objections without delay.
It is important to note that participation under the IP5 PPH pilot programme provides a means for the application to be prosecuted more quickly, but does not guarantee a granted patent.
As well as the IP5 PPH pilot programme, many other PPH programmes exist between a number of countries (for example, see www.jpo.go.jp/ppph-portal). These PPH programmes are continuously evolving and expanding.
Other (non-PPH) programmes
It is worth noting that there are other possibilities for accelerating examination in some of the IP5 offices outside of the PPH.
The European Patent Office (EPO) has a ‘PACE’ programme under which accelerated search and/or examination can be requested at any time after filing an application (unlike the PPH programme, there is no restriction on the claim scope; further no reasoning is required and there is no fee).
The USPTO also has various accelerated examination initiatives such as the ‘track 1 prioritized examination procedure’ (although this requires payment of a large fee). The Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) also have fast-track procedures, although these are not universally applicable to all applicants and applications.
The UKIPO-USPTO PPH
Those filing in the US may wish to consider taking advantage of the PPH scheme between the UKIPO and USPTO. Increasingly we are acting for clients who are applying for patents at the UKIPO in order to then expedite prosecution of an equivalent application in the US.
For further advice on this initiative, and the PPH IP5 more specifically, please contact your usual D Young & Co advisor.