As of August 25, 2010, the USPTO has entered into Patent Prosecution Highway (PPH) agreements with twelve countries. While USPTO press releases tout these programs as “cooperative initiatives that streamline the patent system and promote expeditious, inexpensive and high-quality patent protection throughout the world,” their benefits for the U.S. patent system as a whole, and U.S. applicants in particular, remain to be proven.
PPH Program Requirements
Each PPH program is based on the same basic principle:
[A]n applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF.
For most PPH programs, the OFF is the Patent Office of the priority application country. If there is no priority application, the OFF can be the first Patent Office to issue a favorable patentability ruling. Under the current PPH programs, if the priority application was filed in France and a favorable patentability ruling is obtained from the Australian Patent Office, it is not possible to use the Australian ruling to enter the PPH.
The USPTO has PPH agreements with the following twelve patent offices:
Australia, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Russia (effective September 1, 2010), Singapore, United Kingdom
The PCT-PPH programs are somewhat less restrictive, and do not base eligibility on the presence or absence of a specific priority claim:
[A]n applicant receiving a written opinion or an international preliminary examination report from either the [European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO)] or the USPTO 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 USPTO has PCT-PPH agreements with only three patent offices: Europe, Japan and Korea.
If an application is eligible for a PPH program, the program’s formal requirements are not burdensome. A Request to participate in a PPH (and all supporting documents) must be submitted before substantive examination has commenced in the U.S. application, must be filed electronically, and must include:
- a copy of all OFF Office Actions relevant to patentability (or the PCT WO or IPER);
- a copy of all claims which were determined to be patentable by the OFF (or determined to possess novelty, inventive step and industrial applicability in a PCT application);
- an Information Disclosure Statement that lists all of the documents cited in the OFF (or PCT) application and copies of the cited documents;
- a Claims Correspondence Table showing the correspondence between the claims presented in the U.S. application and the claims deemed patentable in the OFF or PCT application; and
- a statement that “All the claims in the U.S. application sufficiently correspond to the patentable claims in the corresponding [OFF or PCT] application.” (According to the USPTO, this means that the U.S. claims are “of the same or similar scope” or “narrower in scope” after “accounting for differences due to translations and claim format requirements.”)
PPH Program Benefits
- Expedited Examination
Once an application is accepted into a PPH program, it is supposed to be “fast-tracked” for examination. According to USPTO guidance, this means that the application will be “advanced out of turn for examination” and “taken up for examination . . . before all other categories of applications except those clearly in condition for allowance, those with set time limits, such as examiner’s answers, and those that have been granted special status for ‘accelerated examination.’”
USPTO statistics (presented at the November 18, 2009 Worksharing Roundtable) show a significant reduction in the time to first Office Action for PPH applications:
Non-PPH Application: 25 months from filing date
PPH Application: 2-3 months from the grant of a PPH Request
- More Compact Prosecution
USPTO statistics show that PPH applications receive, on average, fewer Office Actions than non-PPH applications:
Non-PPH Applications: 2.7 Office Actions per disposal
PPH Applications: 1.7 Office Actions per disposal
- Increased Likelihood of Allowance
USPTO statistics show that PPH applications enjoy, on average, a higher allowance rate than non-PPH applications:
Non-PPH Applications: 44% allowance rate
PPH Applications: 91% allowance rate
I have questions about the last two “advantages” because the statistics are based primarily on data from the JPO-US PPH program, which accounted for 1657 of the 2,164 total PPH applications as of November 1, 2009. Also, most of the PPH applications (over 800) have been in Technology Center 2600 (Communications), with fewer than 10% (about 100) in Technology Center 1600 (Biotechnology and Organic Chemistry).
In my practice, the claims we are able to obtain in Japan are usually narrower than the claims we have obtained in a corresponding U.S. application. For example, Japanese examiners are reluctant to allow claims that go beyond the scope of the working examples, and there are more restrictions on the use of post-filing date evidence to support enablement or non-obviousness. It does not surprise me, then, that a U.S. examiner would be willing to promptly allow claims that have been allowed in Japan. But, I am skeptical that these benefits will be observed with other PPH programs, especially in applications where the scope of enablement and/or non-obviousness is an issue.
Are the PPH Programs “Lexus Lanes” or Worse?
Traffic in the Washington, D.C. metropolitan area has local governments contemplating—and building—High Occupancy Toll (HOT) lanes that will have variable toll rates based on congestion. Some are complaining that the HOT lanes will be “Lexus Lanes” that only wealthy drivers will be able to afford. The rich will be able to get to work (or the golf course) on time, while those less well off will be stuck in traffic. Will the PPH programs have a similar effect?
- PPH Applications Delay Non-PPH Applications
The most concrete benefit of the PPH programs is the ability to obtain expedited examination. In effect, PPH applications are able to “cut the line” in the examination queue. This necessarily delays examination of non-PPH applications, which effectively are bumped further back in the queue. In this way, the PPH programs have a worse effect on non-PPH applicants than HOT lanes have on traffic. At least HOT lanes remove some cars from the regular lanes, but PPH programs effectively stop traffic in the regular lanes so that the PPH applications can go first.
As the USPTO enters into more PPH programs, more applications will be eligible for expedited examination. If the USPTO is successful in attracting PPH users, it may be a victim of that success if non-PPH applications suffer even more significant examination delays.
- PPH Programs Primarily Benefit Non-U.S. Applicants
Where HOT lanes require a toll for entry, the PPH programs require a patentability ruling from another patent office. This means that U.S. applicants who file U.S. applications first are not likely to be able to take advantage of the PPH in the U.S. Indeed, if there is a U.S. priority application, only the PCT- PPH programs will be available, and then only if the EPO, JPO or KIPO is selected as the PCT searching authority. (There really should be a US-US PCT-PPH!)
Thus, where HOT lanes leave less well-off drivers stuck in traffic, the PPH programs leave U.S. applicants mired in the UPSTO’s application backlog. Of course, U.S. applicants may be able to use their allowed U.S. claims to participate in PPH programs in foreign countries, but only if foreign examination is delayed so much that it has not commenced by the time the U.S. claims are allowed.
Many countries (including the EPO) already offer less restrictive expedited examination options that are far less burdensome than the U.S. accelerated examination program. U.S. applicants interested in obtaining expedited examination in these countries do not need a PPH program to be able to do so.
- PPH Programs May Increase The Application Backlog
Where HOT lanes reduce traffic overall, the PPH programs may actually increase the USPTO’s application backlog problem. If the claims allowed by the OFF (or PCT) are commercially relevant, but narrower than the applicant believes it is entitled to under U.S. law, the applicant may use the allowed claims to enter the PPH to obtain a patent quickly, and also file a continuation application to pursue broader claims. Thus, the PPH may encourage the filing of multiple continuing applications to obtain the desired claim scope.
Is The PPH The Way To Go?
While the USPTO continues to enter into PPH agreements with new countries, I am not yet convinced that they will deliver the promised solutions of improving the quality and efficiency of patent examination and reducing the USPTO’s workload. I look forward to updated statistics from the new PPH programs, and hope the UPSTO considers the impact on U.S. applicants, takes into account the further examination delays experienced by non-PPH applications, and examines continuing application data for PPH applications. Until then, it is premature to conclude that the PPH programs ”promote expeditious, inexpensive and high-quality patent protection throughout the world.”