The Patent Prosecution Highway: Where Is It Headed?
This article was included in our Winter 2009/10 edition of Inside IP magazine.
Patents are fundamentally territorial rights, so that protection in a particular country is generally only available if a patent application has been made or a patent has been registered in that country. Many national and regional patent offices conduct their own searches and perform detailed examination, inevitably leading to significant duplication of effort between different patent offices, most of which are currently struggling with a significant examination backlog.
There has been much discussion in recent years seeking to address this duplication. Ideas such as the Community patent (in Europe) and even a worldwide patent have been floated, although little real progress has been made.
The imperative for change was recently summed up by Horacio Gutierrez,Corporate Vice President and Deputy General Counsel, Microsoft, on 1 September 2009 as follows:
“In today’s world of universal connectivity, global business and collaborative innovation, it is time for a world patent that is derived from a single patent application, examined and prosecuted by a single examining authority and litigated before a single judicial body.
To increase efficiency and enhance patent quality, patent offices also need to leverage collaboration and work sharing opportunities. …. national patent offices should be commended for their early efforts at work sharing through projects such as the Patent Prosecution Highway … .”
What is the PPH?
The Patent Prosecution Highway (PPH) is a practical scheme that permits resource sharing between different patent
offices. It is a series of bilateral agreements between national/regional patent offices enabling an applicant whose claims are determined to be patentable/allowable in one national office to have accelerated examination of a corresponding application before a second national office, while allowing the second office to exploit the search/examination results produced by the first office.
The list of countries that have signed up to bilateral PPH agreements is impressive, and includes the UK Intellectual Property Office (UK IPO), the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office, the Canadian Intellectual Property Office, the German Patent and Trademark Office, IP Australia and the Intellectual Property Office of Singapore, as well as the nationalpatent offices of Denmark, Finland, Hungary, Russia and Austria. The Chinese Patent Office is a significant omission.
Some of the main schemes in place include UK - US, UK – Japan, UK – Korea (which launched on 1 October 2009), EPO – US and US – Japan.
The overall aim of the PPH is to reduce backlogs and time to grant by allowing a patent office to rely on the search and examination work performed by another office.
Procedure
The procedure generally requires the filing of a PPH Request, together with the publication number of the corresponding application/patent, copies of office actions and copies of the allowed/granted claims of the corresponding application/patent, together with a claim correspondence table, relating the allowed/granted claims to the claims of the application that is subject to the PPH request.
In the ideal case, a strong set of claims allowed in one country will be quickly allowed in other countries that apply the PPH program.
Progress so far
Although the aims may be far-reaching, the results to date are less impressive. Minimal use has so far been made by applicants of the various PPH programs, with the number of cases for which PPH requests have been submitted struggling to reach the thousand mark. Many schemes have been extended to see whether the program will gather momentum.
The reasons for the lack of use are not entirely clear, but in many cases the restrictions that are applied in the PPH agreement may make the procedure unattractive to applicants. Similarly, applicants who considered the PPH program to be a rubber-stamping exercise will have been quickly disillusioned.
Some success has been achieved with the US – Japan PPH program, where it is reported (by the UK IPO) that pendency time at the JPO reduced from 27m to 3m for PPH requests based on US first filings, with a 95% grant rate. According to the UK IPO, 20% of PPH requests at the USPTO based on JPO first filings go to grant with just one action, although this does imply that 80% require more than one.
In relation to Europe, the EPO – US program, which has recently beenextended, has not been particularly successful, largely because PCT national phase applications have been excluded. As a result, the priority document has to be a European or US first filing to qualify for the program. Consideration is being given to extending the scheme to PCT national phase applications, in which case it may become significantly more useful.
Plurilateral PPH
One way forward may be via a plurilateral (multilateral) PPH agreement, doing away with the need for many bilateral agreements. This program is being driven by the Japanese Patent Office, with a recent meeting attended by 15 countries, with China as an observer. This program aims to develop a common PPH application format and to encourage acceptance of machine translation technologies in translating office actions.
The Future
It is by no means certain that the PPH program, in either its bilateral or plurilateral forms, will form the model for future cooperation between national patent offices. At a meeting of the trilateral offices (USPTO, EPO, JPO) in November 2008, the view was expressed that the Patent Prosecution Highway initiatives were interesting, but they should not distract away from pursuing the main goal, which is to develop the PCT (Patent Cooperation Treaty) as a work-sharing tool.
It is clear that the future of work cooperation programs at national/regional patent office level continues to be the subject of political considerations. In the meantime, applicants are left with a variety of tools for pursuing patent grant in multiple countries. PPH is one of those tools, but other specific mechanisms for pursuing grant quickly and at low cost before a particular national/regional patent office should also be considered. Strategies available to achieve this before the EPO are dealt with elsewhere in this publication.