The road to getting a patent can be quite long and winding. This can be advantageous for some patent applicants, particularly start-ups and spin-outs, because it spreads out the costs for patent prosecution over a number of years. However, there are times when it may be desirable to speed-up the patent prosecution process. For example, a granted patent may look more attractive to a potential investor or acquirer, or it may be needed to start infringement proceedings against a third party. Many jurisdictions offer jurisdiction-specific ways to accelerate parts of the prosecution process. In this article, we explain a popular way to speed-up the process to getting a patent: the aptly named Patent Prosecution Highway.
What is the Patent Prosecution Highway (PPH)?
The Patent Prosecution Highway (PPH) is an international agreement between different patent offices that allows you to accelerate the process to obtain a granted patent. In particular, PPH allows you to request accelerated prosecution at a patent office in one country when the patent office of another country has already examined your claims and determined that they are considered patentable. That is, PPH can be used to accelerate proceedings in other jurisdictions when a patent office that participates in PPH has decided that you have an allowable set of claims.
What are the requirements of PPH?
You can request PPH in jurisdiction A for your patent application if:
- You have a granted patent, or a positive examination report from a participating patent office in jurisdiction B, i.e. an allowable set of claims;
- You are willing to amend your claims in jurisdiction A so they are sufficiently similar to the allowable set of claims in jurisdiction B; and
- Substantive examination has not yet begun in jurisdiction A.
Usually, the application for which you are requesting PPH and the application that has been granted / has a positive examination report also need to have the same priority date. That is, both applications need to be related, such as by being in the same patent family.
It is necessary to first go through the patent prosecution process at another patent office (B) and obtain a granted patent or a positive examination report. That is, if patent office B issues an examination report saying that the claims of your patent application satisfy all the requirements for patentability, i.e. no objections are raised, you can use this report.
You can also utilise a positive opinion on a PCT (Patent Cooperation Treaty) patent application (an “international patent application”). A PCT application cannot itself become a granted patent, but you will always receive a search report and search opinion on a PCT application. Depending on which patent office conducted the search for the PCT application, this can often be used to accelerate examination at another patent office via PPH. Advantageously, this has the potential to significantly speed-up the prosecution of national phase filings that stem from a PCT application. (See also this glossary for an explanation of the PCT application process: https://www.appleyardlees.com/glossary-of-key-patent-terms/)
Importantly, when requesting PPH, the claims being prosecuted at patent office A need to substantially match the allowable set of claims from patent office B.
Where does it work?
PPH depends on (sometimes individual) agreements between patent offices, so it is country specific. For example, the UK IPO and EPO are able to accept PPH requests based on positive opinions from patent offices in:
- US
- Canada
- Japan
- South Korea
- China
- Australia
However, opinions from many other patent offices are also accepted. Additionally, the UK IPO will accept a positive search opinion issued on a PCT application, regardless of which patent office performed the search.
How much does it cost?
PPH is usually free to request! This is a significant advantage because other methods of accelerating prosecution can be costly and/or are only allowed for specific reasons. Therefore, PPH can be especially useful in countries where prosecution is slow or where the patent office typically follows what happens in another jurisdiction anyway.
Usually, PPH is less useful in countries that offer cheap or free acceleration programs, such as the UK or the European Patent Office. However, PPH can still be advantageous in such countries. For example, in the UK, it is necessary to provide a good reason for accelerating examination proceedings. This is not necessary when using PPH.
At the EPO, acceleration can readily be requested using the European Patent Office’s PACE program, and therefore PPH is less likely to be useful. Furthermore, the EPO is very likely to perform their own examination anyway, and so might raise different objections than, for example, the USPTO.
On the other hand, it is often possible to obtain, for example, a granted UK or EP patent fairly quickly (at least compared to other jurisdictions). This may then be used to accelerate grant in, for example, the US.
Should I use PPH?
This will largely depend on the country for which you are considering requesting PPH. It will also depend on whether you are happy to limit yourself to the allowable set of claims that has been approved by patent office B. For example, some subject matter is not patentable in all jurisdictions, or may need to be phrased/claimed differently to meet local requirements, and therefore, a set of claims that is allowable in one jurisdiction may not work for another jurisdiction. In this case, PPH is less useful.
However, for many other cases that do not fall into one of the above categories, PPH can be very useful. For example, start-ups or other small companies that require granted patents quickly, for example, to obtain investment, can use PPH to achieve this with minimal cost. That makes PPH a cost effective way to speed up prosecution in many countries.
Our patent experts can advise on whether using PPH makes sense for your invention. Get in touch for a free consultation.
