Getting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you need it fast. Luckily, there are some options for fast tracking your application. Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora Consulting explores one of these options – the Patent Prosecution Highway (PPH) and how it can significantly speed up prosecution between international jurisdictions with similar policies. Blog: https://www.aurorapatents.com/blog/new-podcast-patent-prosecution-highway Podcast: https://patentlystrategic.buzzsprout.com/1734511/8784105-patent-prosecution-highway-fast-tracking-your-application

1. Patent Prosecution
Highway
ASHLEY SLOAT | February 23, 2021
This presentation is for information purposes only and does not constitute legal advice.

2. Global PPH and IP5 PPH
• Prevents multiple countries from duplicating the same
work
• PPH request may be filed in the USPTO based on the
work product of any office participating in either pilot
program
– Positive result from PCT or national work product
• Single request form
• Permits accelerated processing for FREE
• https://www.wipo.int/pct/en/filing/pct_pph.html

3. Global PPH and IP5 PPH
• PCT/PPH
– Started January 29, 2010 and renewed thereafter
– Fast tracking if positive report from: ISA, IPEA, EPO, JPO,
USPTO
• IP5
– January 6, 2016 and renewed thereafter
– Fast tracking if positive report from: EPO, JPO, KIPO, SIPO,
USPTO

4. PPH Participating Countries
(one form for all)

5. Additional PPH Agreements
(specific form for each)
Brazil Czech Republic Mexico
Nicaragua
Philippines Romania Saudi Arabia
Taiwan

6. Eligibility for PPH
• U.S. application must have the same earliest filing date
or priority date as the one in the other Patent
Prosecution Highway office
• Application must have at least one claim that a
participating office has ruled is patentable or allowable
• All claims to the USPTO must tie back to the claim in a
foreign office (almost identical or narrower)
• USPTO cannot have started a review of the patent prior
to the PPH request

10. Once applied…
• USPTO tells the applicant that they’re accepted or
denied
– If accepted, the applicant advances ahead of other patent
applicants in line
– If denied, the applicant gets one chance to discuss the
defects in the patent and reply with a perfected request

11. EPO PPH Quirks
• Table showing how each claim of the 2nd application
corresponds to an allowed claim of the 1st application
• EPO will still conduct its own search and examination,
and will independently consider whether the
application meets EPC patentability requirements
• Offers own accelerated examination – PACE
– Less onerous than PPH
– More flexible for claims that can be presented
– Request not placed in public file
• UKIPO views PPH more favorably than EPO

12. Results in Different Countries
• Higher Grant Rate
– 92% PPH grant vs. 71% overall – SIPO
– 100% PPH grant vs. 52% overall – IP Australia
• Faster Disposition
– 2.6-2.8 months vs. 9.4 months – JPO
– 2.5-2.9 months vs. 10.8 months - KIPO

13. Caveats
• Examiner in one country may raise objections and make
adverse comments on claims allowed elsewhere
• Each participating office has own “support,” “clarity,”
and “enablement” criteria
• PPH request preparation + prosecution – may not be
much less than non-PPH examination