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Patent Prosecution Highway: Fast Tracking Your Application

Patent Prosecution Highway: Fast Tracking Your Application

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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

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

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Patent Prosecution Highway: Fast Tracking Your Application

  1. 1. Patent Prosecution Highway ASHLEY SLOAT | February 23, 2021 This presentation is for information purposes only and does not constitute legal advice.
  2. 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. 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. 4. PPH Participating Countries (one form for all)
  5. 5. Additional PPH Agreements (specific form for each) Brazil Czech Republic Mexico Nicaragua Philippines Romania Saudi Arabia Taiwan
  6. 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
  7. 7. 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
  8. 8. 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
  9. 9. 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
  10. 10. 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

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