In 2006, the United States Patent and Trademark Office (USPTO) joined several other countries’ Patent Offices by entering into a program called Patent Prosecution Highway (PPH). The USPTO now participates in the PPH program with over 30 countries and is on track to work with more countries in the near future.
PPH is a program that enables an applicant, who is seeking a patent in the U.S. and who receives a positive result from prosecuting claims from one of the participating offices, to request an accelerated prosecution of the claims for the U.S. patent application. PPH expedites examination of the pending U.S. patent application based on the allowed claims abroad. Furthermore, the PPH promotes reuse of a search already performed prior to the U.S. examiner’s search and thus reduces the examiner’s workload and increases efficiency of the prosecution.
Moreover, the allowance rate of PPH applications is higher (about 80%) than non-PPH applications. One explanation may be that the U.S. examiner utilizes a search already performed by the foreign examiner, as stated above, and therefore the claims might be in better condition for allowance.
USPTO Requirements for PPH Participation:
1) The U.S. application for which participation in the PPH program is requested must have the same earliest date, whether a priority date or filing date, as that of a corresponding application filed with the other PPH participating patent office, or a corresponding PCT international application for which one of the participating offices was the International Searching Authority (ISA).
2) The corresponding application has at least one claim indicated as allowable or patentable by the foreign office.
3) All claims in the U.S. application for which participation in the PPH is requested must sufficiently correspond to the allowable or patentable claims in the corresponding foreign application.
4) Examination on the merits, in the U.S. application that the request is being filed for, has not yet begun.
The following documents are requested for submitting the PPH to the USPTO:
1) PPH Request (Form PTO/SB/20GLBL):
2) List of claims, which indicate how all the claims in the U.S. application correspond to the allowable or patentable claims in the corresponding foreign application.
3) A copy of the Office Action issued prior to granting of the foreign application, along with an English translation.
4) An information disclosure statement (IDS) if not previously submitted listing the documents cited in the Office Action, along with copies of all documents except U.S. patents and U.S. publications, if not previously submitted.
No Fee for Filing PPH Request
No fees are required for filing a PPH Request, unless an extension of time is being filed simultaneously with this request.
If all requirements for PPH are met, applicant’s petition will likely be granted. If an applicant’s PPH petition is denied, applicant has one more chance to correct the defects and file a renewed request for PPH within the time-limit set forth by the USPTO. If the renewed request does not cure the defects of the first request, the applicant will be notified and the application will await action via the regular route.
Filing PPH in Continuation Application
If Applicant requires a PPH in a continuation application, he/she MUST file a separate request in each of the pending continuing application that he/she seeks the special prosecution in. The PPH grant will not carry over from the parent application.
Adding Claims After PPH Request Filing
Any claims added/amended after the PPH Request grant, must sufficiently correspond to one or more allowable or patentable claims in the corresponding foreign application and must be accompanied by a certification statement to this effect.
Extensions of Time
Extensions of time under 37 C.F.R. § 1.136(a) are allowed during prosecution of the U.S. application in which PPH request has been granted.
Patent Term Adjustment
Patent Term Adjustment (PTA) is available to applications accepted in the PPH program.
Applications Not Qualified for PPH
Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded from participating in the PPH program.