Hardly a month passes without there being yet another Patent Prosecution Highway (PPH) announcement from the United States Patent and Trademark Office. The PPH is lauded by the USPTO with great frequency, and for good reason. But what exactly is the PPH and how do you use it to your benefit?
Since the largest part of my own practice is devoted to software and associated computer implemented processes I don’t have a reason to do much international work. For the most part software and associated inventions have difficulty achieving meaningful patent protection outside the United States. So to find out more about the PPH I called on Craig McRobbie of Birch Stewart Kolasch & Birch (“BSKB”).
BSKB is known in the patent community for having an exceptionally large foreign client base, and is one of the top patent law firms in terms of the number of patent applications filed on an annual basis. While offering a full array of patent prosecution services, there is no doubt that BSKB is regarded as specializing in representing those overseas who are seekingU.S.patents for their inventions. So when I had a PPH question I started there and spoke with Craig McRobbie, perhaps the most experienced attorney at the firm on matters relating to the Patent Prosecution Highway.
Through the end of June 2011 there have been only 6,657 PPH requests, with upwards of 40,000 registered and practicing patent attorneys or agents in the United States that means there is not a lot of collective experience with the PPH despite the obvious advantages. McRobbie has done about 30 PPH applications, which no doubt ranks at or near the top of the list of patent attorneys with experience in PPH filings.
According to McRobbie, the PPH is a good alternative for clients coming into the United States if there has already been allowable matter. He explains: “The concept is really simple. If you have allowable claims from your priority application, and now you are in the United States, regardless of how you come in, assuming your U.S.claims match the allowable priority claims, you advance forward in the examination queue.”
The United States Patent Office likes PPH applications because they take significantly less time to prosecute, on average, than non-PPH applications. This is as a result of being able to re-use information, such as previous search and examination results, between and among the USPTO and partner patent offices. McRobbie points out that the work sharing aspects of the PPH does speed up the process, but you should not treat the PPH as guaranteeing the issuance of a patent.
“PPH doesn’t mean you are going to get your patent, it just means you are going to get your first action faster, much faster,” McRobbie says. Notwithstanding, it is certainly true to observe that the overall allowance rate during FY 2010 was about 46%, but was over 90% for applications on the PPH. So while there is no guarantee of a patent even if you employ the PPH process, with over 90% of applications allowed it will make considerable sense for those who can qualify for the PPH to pursue this path if the goal is to obtain a quickly issued U.S. patent.
Under the various PPH programs, if an application filed in an Office of First Filing (OFF) receives an indication that at least one claim is patentable, a corresponding application with corresponding claims filed in the USPTO as the Office of Second Filing (OSF) may be advanced out of turn for examination. To have the request for participation in the PPH accepted in the USPTO, an applicant must make available to the USPTO the relevant work of the OFF as well as any necessary translation.
“When you file the PPH petition it is about 2 months before it is granted, an examiner is assigned within about 2 to 3 weeks and you get a first action within 2 to 3 months,” McRobbie says. And according to the USPTO website all PPH cases average 1.7 actions per disposal, which is substantially lower than for non-PPH applications. In fact, McRobbie told me that it is not uncommon to receive a first action allowance in a PPH case. As a result, those relying on the PPH need to be aware that the decision on whether to file a continuation and pursue other embodiments will come quickly, so you need to be prepared prior to pursuing the PPH route. For this reason “the PPH is more valuable in industries that don’t require regulatory approval, or where the goal is to license,” McRobbie says.
The key to getting your application accepted into the PPH is to make sure the claims in the U.S.patent application correspond to the allowed claims in the foreign case. “When you file the PPH you identify the priority application, if necessary file a preliminary amendment so the claims match, you provide a copy of the allowable claims, and if necessary a translation into English, and you provide relevant office actions and any references,” McRobbie says. “Make sure your claims in the United States sufficiently correspond… do a claim chart.”
So what does the “sufficiently correspond” language really mean? “It might as well mean virtually identical,” according to McRobbie. “It is almost like copying claims.”
In addition to the ordinary, garden variety PPH, the USPTO has recently embarked upon Patent Cooperation Treaty PPH agreements. Under the PCT-Patent Prosecution Highway, an applicant receiving a written opinion or an international preliminary examination report from selected searching authorities stating that at least one claim in a PCT application has novelty, inventive step, and industrial applicability may request that the other office fast track the examination of corresponding claims in corresponding applications. The PCT-Patent Prosecution Highway leverages fast-track patent examination procedures already available to allow applicants to obtain corresponding patents faster and more efficiently.
So what are the downsides to the PPH? They seem to all revolve around the requirement that claims “sufficiently correspond.” McRobbie says: “Every time you file an amendment you need to show the claims sufficiently correspond.” Furthermore, it seems that over the last 6 to 9 months more and more U.S.patent examiners have started to clue into the “sufficiently correspond” requirement, which can create an insurmountable hurdle for the applicant. According to McRobbie this has become a bit of a problem because “just being narrower does not satisfy sufficiently correspond… and if the claims do not sufficiently correspond the amendment is non-compliant.” The recourse for a non-compliant amendment is to file a continuation, which obviously defeats the purpose of the PPH. There is a slightly different treatment for PPHs based on Japanese priority, which allows for narrower limitations not found in the allowable priority claims, to be added. However, for such JP-PPHs, the USPTO requires that the narrower limitations be present at the time the PPH request was granted.
On some occasions Examiners are willing to do Examiner Amendments, which get around the “sufficient correspondence” requirement, which as the result of the Examiner Amendment is never discussed. “Examiners do have discretion to enter an Examiner’s Amendment that does not meet the “sufficient correspondence” requirement,” McRobbie says. “The number of examiners calling for an Examiner’s Amendment prior to a first action is on the increase.” So if you are faced with a sufficient correspondence matter consider suggesting to the examiner that he or she do an Examiner Amendment. This will obviously benefit your client and should benefit the examiner as well, allowing them to fix the claim per your approval to quickly allow the case and get it off their desk and the appropriate checks toward the examiner’s quota being booked.
The verdict is clear. If you can avail yourself of the PPH and you want aU.S.patent as quickly as possible you should petition to enter the PPH process.
As far as I can tell, the only thing wrong with the PPH is that it applies only to those who have an earlier filed foreign patent application or international patent application with favorable treatment of some kind. I know this is not a valid criticism of the PPH because it is only designed to help facilitate USPTO handling of applications having some kind of foreign or international treatment. So it works as designed and works well. I am supportive of any and all efforts to reduce the backlog, reduce patent pendency and streamline the patent process.
I am really looking forward to the day when there is acceleration or advancement aimed at independent inventors and truly small businesses, like the many start-up companies that can and will create jobs in America. The USPTO had solved this problem with Track One, but unfortunately had to put the program on hold while Congress deals with determining whether to adequately fund the USPTO or to continue to use user fees as something of a national piggy-bank. My hope is that the USPTO will soon green light the delayed Track One program, which will allow for advancement out of order upon payment of a fee. I also hope Congress sees the wisdom of giving the USPTO fee setting authority so there can be small entity and micro-entity discounts on that acceleration fee.