'Patent Prosecution Highway' extended

Article from our Summer 2008 edition of InsideIP.

As previously reported in the news section of our website, pilot work-sharing arrangements allowing a form of accelerated examination have been in place for a short while between the UK Intellectual Property Office (UK IPO), Japanese Patent Office (JPO) and US Patent and Trademark Office (USPTO).  We can now report that these arrangements have recently been extended to cover UK, US and JP applications derived from International (PCT) applications.

The scheme is known as the “Patent Prosecution Highway” (PPH) and has the aim of minimising duplication of effort of the national offices, thereby providing benefits to applicants in terms of reducing the cost and time required to obtain patent rights.  When one of these offices has found the claimed invention to be patentable, accelerated examination under the PPH can be requested at any of the other offices on the basis of this favourable finding.  However, this only applies when the favourable finding is made at the office that handled the first application made for the invention (although not necessarily the first application itself).  The exception is where a PCT is filed with no priority claim, in which case the favourable finding should be at the office that starts examining the invention first.

It should be noted that the scheme does not provide a “rubber stamp” route to grant in one office where the other office has found the claimed invention to be patentable, and the claim set need not be identical for the scheme to apply.  The claims will still be reviewed for compliance with the country's own patent laws, which means that different claim formats appropriate to the national practice can be included in the application.  Nevertheless, the examiner will look at the comments made in relation to substantive matters (particularly novelty and inventive step) in the search and examination reports of the other office, and use these as an aid to come to their own opinion more quickly.

Both the UK IPO and the European Patent Office allow accelerated examination of applications on request, so PPH is most likely to be of interest to applicants who prosecute a first-filed UK application quickly and then seek accelerated examination in the US and/or Japan.

Please contact us if you would like further details of the scheme or if you would like to discuss the options for a particular case.

01 Jun 2008

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