PPH at the USPTO: Following the Patent Prosecution Highway for a Smooth Ride

By Gene Quinn
December 26, 2016

Beginning in July 2006, the United States Patent and Trademark Office (USPTO) has partnered with several other offices in Patent Prosecution Highway (PPH) programs. As of the end of fiscal year 2016, according to the USPTO’s 2016 accountability report the United States has signed twenty-two PPH agreements with other nations around the world. The USPTO has also agreed to provisions of the Global PPH system and is sharing through the Global PPH system or bilateral PPH agreements with 30 different IP offices. The PPH is the cornerstone of the USPTO’s work-sharing cooperation efforts.

The PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office, which allows the applicant to obtain a patentability decision in the second office more quickly. Furthermore, the PPH promotes patent application processing efficiency by allowing the examiner in the office of later examination (OLE) to reuse the search and examination results from the office of earlier examination (OEE), thereby reducing workload and duplication of effort.

If you qualify for participation in the PPH it makes great sense to attempt to get into the program. Not only will your application move from wherever it is in the prosecution cycle to the front of the line, but the allowance rate for PPH applications is extremely high. Although somewhat dated now, as of the end of 2014 the allowance rate for applications that entered the PPH were 84%, which compared to 53% for non-PPH applications. (See slide 17). This spread in allowance rates is not coincidental. Because the U.S. patent examiner can leverage the work done by another examiner that has already allowed claims it would seem entirely logical to expect a very high allowance rate in the PPH.


PPH Eligibility

In order to be eligible to participate in the Patent Prosecution Highway program at the USPTO, the following requirements must be met:

(1) The U.S. application for which participation in the PPH pilot 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) or the International Preliminary Examining Authority (IPEA).

(2) The corresponding application has at least one claim indicated as allowable or patentable by the OEE, ISA, or IPEA. [1]

(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 OEE application.

(4) Substantive examination of the U.S. application for which participation in the PPH is requested has not begun.

More on “sufficiently correspond”

A claim is considered to sufficiently correspond where the claim is of the same or similar scope as an allowable or patentable claim in the corresponding OEE application. Allowance for differences in claim format requirements from jurisdiction to jurisdiction is made.

A claim in a U.S. application that is narrower in scope than claims indicated as allowable/patentable in the OEE application will sufficiently correspond if presented as a claim dependent upon a claim that is of the same or similar scope as a claim indicated as allowable/patentable in the OEE application.

A claim in a U.S. application that introduces a new or different category of claims than those indicated as allowable or patentable by the OEE is not considered to sufficiently correspond. For example, if the OEE application contains only claims that relate to a process of manufacturing a product, claims in a U.S. application directed to product claims do not sufficiently correspond even if the product claims are dependent upon process claims that would otherwise sufficiently correspond.

Required Documents to Enter the PPH

In order to participate in the PPH the applicant must submit the following to the USPTO

(1) A request for participation into the PPH program and a request that the U.S. application be advanced out of turn for examination under 37 CFR 1.102(a).

(2) A claims correspondence table in English, which indicated how (and certifies that) all claims in the U.S. application correspond to the allowable or patentable claims in the OEE application.

(3) A copy of the office action issued prior to the “Decision to Grant a Patent” in the OEE, along with an English translation thereof, or the latest work product in the international phase of the OEE PCT application, along with an English translation thereof. [2]

(4) An information disclosure statement (IDS) listing the documents cited in the office action or PCT work product mentioned above, along with copies of all documents except U.S. patents and U.S. patent application publications. Notwithstanding, copies previously submitted in the U.S. application do not need to be resubmitted.

The foregoing must be submitted via EFS-Web and indexed with the document description “Petition to make special under the Patent Pros Hwy,” except that any preliminary amendment or IDS must be separately indexed as a preliminary amendment or IDS, respectively.

It is worth specifically noting that the list of requirements doe not include the payment of a petition fee. This will undoubtedly seem out of place to those familiar with USPTO practice and procedure, but the Office specifically eliminated the PPH petition fee in 2010.


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PPH Examining Procedures

Where the request for participation in the Patent Prosecution Highway and special status is granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. If the request does not meet all the requirements for inclusion in the PPH, the applicant will be notified of the defects and given one opportunity to perfect the request in a renewed request for participation. Action on the underlying application by the USPTO will not, however, be suspended awaiting a renewed request for participation in the PPH. Thus, if the underlying application is picked up for examination after the applicant has been notified of the defects in the request, any renewed request will be dismissed.

If the renewed request is perfected and examination has not begun, the request and special status will be granted, the applicant will be notified, and the U.S. application will be advanced out of turn for examination. If the request is not perfected, the applicant will be notified and the application will await action in its regular turn.

Although a request for participation in the PPH and special status granted in an application carries over to a request for continued examination (RCE) of the application, a request for participation in PPH and special status granted in a parent application will not carry over to a continuing application. The applicant must fulfill all the conditions set forth above in order for special status to be granted in a continuing application.

Any claims amended or added after the grant of the request for participation in the PPH must sufficiently correspond to one or more allowable or patentable claims in the OEE application. The applicant is required to submit, along with the amendment, a statement certifying that the amended or newly added claims sufficiently correspond to the allowable or patentable claims in the OEE application. If the certification statement is omitted, the amendment will not be entered and will be treated as a non-responsive reply.

Special PPH Issues

Extensions of time under 37 CFR 1.136(a) are allowed during prosecution of the U.S. application accepted in the PPH program.

Patent Term Adjustment (PTA) is available to applications accepted in the PPH program.

The complete list of PPH participating countries is available at: www.uspto.gov/patents/init_events/pph/index.jsp.

Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH program.

The PPH pilot program does not absolve applicants of all their duties under 37 CFR 1.56 and 37 CFR 11.18. The applicant still has a duty of candor and good faith, including providing to the Office other information known to be material to patentability.

 

From the USPTO FY2016 accountability report.

From the USPTO FY2016 accountability report.

_______________

[1] A claim determined as novel, inventive, and industrially applicable by the ISA or IPEA has the same meaning as allowable or patentable for the purposes of the PPH program.

[2] If the office action or PCT work product is already present in the U.S. application or is available via the Dossier Access System Website or the PATENTSCOPE system of the World Intellectual Property Organization (WIPO), the applicant must identify the document but need not supply a copy thereof.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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