Posts Tagged: "pph"

I am going to make a bold statement: every non-provisional patent application for an invention originating in the U.S. should be filed via the Patent Cooperation Treaty (PCT) first. Then, after another six months, following the international search, and PCT publication, those who desire U.S. patents should enter the U.S. National Stage. That’s right: every single application, no exceptions. No, I have not lost my mind. Here’s why.

Ecuador has been participating in a pilot program of the Patent Prosecution Highway (PPH) since 2016 but has as of yet failed to implement the system for a number of reasons. However, with the announcement in July that Ecuador may join the Pacific Alliance next year under its new President, Lenin Moreno, and a general market-friendly shift in government, it is expected that the PPH could soon become effective. The PPH would be indispensable for Ecuador, as it would save resources and lower costs for applicants and for the Patent Office, would speed up the lengthy patent prosecution process, and would harmonize practice in the region by creating unified criteria on the issues subject to these examination procedures.

Since 2006, the U.S. Patent and Trademark Office (USPTO) has participated in the Patent Prosecution Highway Pilot Program (the PPH Program). Generally, the program is designed to accelerate examination of a given patent application as a result of examination of a corresponding application at another PPH-participating patent office having reached a positive ruling more quickly. If an application is eligible for and accepted into the PPH Program, the USPTO expedites processing of the application. Examiners also have the benefit of drawing from another examiner’s assessment of corresponding claims. Generally, existing data on the PPH Program has indicated that it is associated with increased allowance prospects and decreased examination times relative to non-PPH applications. However, the vast majority of this data is years old (e.g., from 2014). This article will briefly summarize the eligibility requirements for the program and present new data showing favorable allowance and pendency times. However, it will end with a warning: request entry to the PPH program in the United States at your own risk.

Patents confer rights and when you have rights you have an asset that can be sold or licensed. But you will have an asset that can in some circumstances be sold or licensed even before you actually obtain a patent. Increasingly more and more companies are looking for outside ideas and inventors can and do strike deals before a patent is issued. It is true, however, that the further you are down the path toward a final solution being real the more valuable your invention will be. With this in mind, there may be instances where getting some patent protection quickly could be beneficial. This article discusses several strategies for more quickly obtaining a patent.

At this moment in history almost everything we thought we knew about global patent protection is being challenged. The U.S. is not the most patent friendly jurisdiction in the world, instead being tied for 10th with Hungary, which really puts into perspective the fall from grace patent rights are having in America… There is no doubt that the U.S. continues to take steps backwards due to variety of self- inflicted wounds. The omnipresent threats of more patent reform, a Supreme Court that has created unprecedented uncertainty surrounding what is patent eligible (see e.g., here, here and here), and a Patent Trial and Appeal Board that has been openly hostile to property owners (see e.g., here and here), allows harassment of certain patent owners over and over again, all the while failing in its mission to provide relief from patent trolls. Meanwhile, a number of countries around the world have taken positive steps forward on the patent front, including countries you might not ordinarily consider as patent friendly jurisdictions.

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. The allowance rate for applications that entered the PPH were 84%, which compared to 53% for non-PPH applications. 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.

IP Australia actually has built into its quota system a driver for completing prosecution of open cases before taking up new cases. Therefore, there is a rule inside IP Australia that an Examiner must respond to communication from an applicant within 20 days of receiving the applicant’s communication. Oftentimes, it is sooner. Therefore, an application will not languish at the bottom of the Examiner’s work pile and the case will get attention from the Examiner in short order.