The document discusses the Patent Prosecution Highway (PPH) program which allows applicants to request expedited examination of corresponding applications filed in multiple patent offices. It provides an overview of how PPH works, its purpose of promoting work sharing and efficiency. The history and implementation of global and IP5 PPH pilot programs are described. Eligibility requirements and required documents for PPH requests to the USPTO are outlined. The processing of requests as granted, dismissed or denied is also summarized.

1. Navigating the
Patent Prosecution Highway (PPH)
Presented by Chuck Meeker
© 2016 Workman Nydegger

2. PPH: A Brief Overview
• How PPH works:
– Claims determined allowable in a participating Office of Earlier Examination
(OEE); the corresponding U.S. application (in Office of Later Examination
(OLE)) is advanced out of turn – Still examined according to U.S. patent law.
• Purpose of PPH:
– Work sharing: OLE can utilize work product (search and examination results) of
OEE; more thorough examination; improve patent quality.
– Office efficiency: avoiding duplication of work among jurisdictions.
– Time and cost savings: expedites the examination process in the OLE;
determine patentability faster in multiple jurisdictions.

3. PPH: A Brief History
• July 2006 – US launches PPH pilot program(s) and develops
“partnerships” - agreements with each partnering Office, individually.
– an application whose claims have been determined to be patentable in an Office of First Filing
(OFF) may be eligible for accelerated examination in an Office of Second Filing (OSF).
• January 2010 – US implements PCT-PPH; ISR “allowable” claims
(novelty / inventive step / industrial application).
• May 2010 – PPH 2.0; PPH request no longer requires petition to make
special under 1.102(d) – for reasons other than age/illness/energy/etc. –
and $130 fee under 1.17(h).
– Instead, advance out of turn under 1.102(a) – expedite business of Office; w/o fee.
• July 2011 – US implements revised requirements.
– Replace OFF / OSF with OEE / OLE for applications sharing a priority/filing date.
• January 2014 – US launches Global PPH / IP5 PPH pilot programs;
“Uniformity” of rules among partner states.
– USPTO treats all PPH requests and PPH approved applications the same.
– All partner Offices adhere to same minimum requirements.

4. Global / IP5 PPH: Implementation
• Global PPH and IP5 PPH pilot programs are running
concurrently AND are substantially identical.
– differing only with regard to their respective participating offices and trial period.
– Global PPH pilot runs for 1 year (ending January 5, 2014).
– IP5 PPH pilot runs for 3 years (ending January 5, 2017).
– Either may be extended or terminated with approval of ALL Offices.
– Any Office may opt-out at any time for any reason.
• USPTO opted for participation in BOTH programs.
– file request based on work product of any office participating in either program.
– same request form and no need to specify which program is being utilized.
– Global PPH and IP5 PPH pilot programs supersede any prior PPH program between
USPTO and each Global PPH and IP5 PPH participating Office.
– Any existing PPH programs between the USPTO and offices that are not
participating in either Global PPH or IP5 PPH pilot program remain in effect.

5. NON-Global / IP5 PPH: Individual
partners (special forms)
Austria
Columbia
Czech Republic
Germany
Mexico
Nicaragua
Philippines
Singapore
Taiwan

6. Global / IP5 PPH: Eligibility
Requirements in USPTO
• (1) OEE must be a Global / IP5 PPH participating Office.
– “corresponding” (earlier-examined) national or regional application filed
with another Global / IP5 PPH participating office; or
– “corresponding” (earlier-examined) PCT international application where a
Global / IP5 PPH participating offices was the ISA or IPEA.

7. Global / IP5 PPH: Eligibility
Requirements in USPTO
• (2) U.S. application for later examination must have
the same earliest date (priority or filing) as the earlier-
examined, corresponding application.
– US utility + foreign-filed and/or PCT application – filed on same day.
– US utility  foreign-filed and/or PCT application – priority claim.
– US provisional  US non-provisional + foreign-filed application –
priority claim.
– foreign-filed and/or PCT application  US utility / national stage entry
– priority claim.

8. Global / IP5 PPH: Eligibility
Requirements in USPTO
• (3) The corresponding application has at least one claim
indicated to be allowable / patentable by the OEE in its
capacity as a national or regional Office, ISA, or IPEA.
– A claim determined as novel, inventive, and having industrial application by
the ISA or IPEA has the meaning of allowable / patentable for the purposes
of this program.

9. Global / IP5 PPH: Eligibility
Requirements in USPTO
• (4) ALL claims in the U.S. application must sufficiently
correspond (or be amended to sufficiently
correspond) to the allowable / patentable claims in the
corresponding OEE application.
– “sufficiently correspond” = accounting for differences due to claim
format requirements, the claim is of the same or similar scope as a
claim indicated as allowable / patentable in the OEE application.
– “sufficiently correspond” = narrower dependent claim depending from a
claim of same or similar scope as a claim indicated as allowable /
patentable in the OEE application.
– BUT, cross-category claims ≠ “sufficiently correspond” - e.g., OEE
application contains only process claims; any product claims in the
U.S. application are not considered to sufficiently correspond, even if
the product claims are dependent on process claims which sufficiently
correspond to allowable /patentable claims in the OEE application.

10. Global / IP5 PPH: Eligibility
Requirements in USPTO
• (5) Substantive examination of the U.S. application
(i.e., in the OLE) has NOT begun.
– Notice to File Missing Parts ≠ substantive examination.
– Restriction Requirement ≠ substantive examination.
• NOTE: at this point, you may not need PPH; application will not likely be
examined any faster than its normal examination process even if your PPH
request is granted – Examiners will generally examine an application within
60 days from the date a reply to the restriction requirement is filed (i.e., by
the time your PPH request is decided, your application would probably be
examined in its regular turn anyway).

11. Global / IP5 PPH: Required
Documents
• (1) A request for participation in the Global / IP5 PPH
pilot program and a request that the U.S. application
be advanced out of turn for examination by order of
the Director to expedite the business of the Office
under 37 CFR 1.102(a). NO FEE is required.
• (2) A claims correspondence table in English,
indicating how and certifying that all the claims in the
U.S. application correspond to allowable / patentable
claims in the OEE application.
– NOTE: each submitted via EFS-Web and indexed with the document
description "Petition to make special under the Patent Pros Hwy."

12. Global / IP5 PPH: Required
Documents
• (3) A copy of the allowable claims and OEE work
product relevant to allowability, including:
(A) the office action issued just prior to the "Decision to Grant a
Patent" (e.g., the latest "Notification of Reasons for Refusal") in the OEE
national / regional application, along with an English translation thereof, if
applicable; or
(B) the latest work product in the international phase of the OEE PCT
application (e.g., the Written Opinion of the ISA or, where a demand under
PCT Chapter II has been filed, the Written Opinion of the IPEA or the
International Preliminary Examination Report), along with an English
translation thereof, if applicable.
– NOTE: if the office action or PCT work product is already present in
the U.S. application or is available via the Dossier Access system or
the PATENTSCOPE system of the World Intellectual Property
Organization (WIPO), the applicant must identify the document and
request USPTO obtain a copy, but need not supply a copy thereof.

13. Global / IP5 PPH: Required
Documents
• (4) An information disclosure statement (IDS) listing
the documents cited in the office action or PCT work
product submitted under item (3) above, along with
copies of all documents except U.S. patents and U.S.
patent application publications.
– NOTE: submitted via EFS-Web and indexed with the document
description “Information Disclosure Statement (IDS).”
– NOTE: any IDS or document copies submitted in the U.S. application
prior to the Global / IP5 PPH request need not be resubmitted.
– NOTE: document copies not in English require a concise explanation
of relevance. English language version of search report indicating
degree of relevance is sufficient.

14. Global / IP5 PPH: U.S. request
Granted; Dismissed; Denied
• Requests that meet all eligibility requirements AND
properly include all required documentation are
GRANTED, and the application is advanced out of turn.
• Requests that do not meet all eligibility requirements are
immediately DENIED, and application awaits action in its
regular turn.
• Requests that meet all eligibility requirements BUT do not
properly include all required documentation are
DISMISSED, and applicant is given ONE chance to fix it.
• DISMISSED requests that are not properly corrected are
then DENIED.

15. Global / IP5 PPH: Misc.
• Following a DENIED request, a continuation or
divisional application may be filed and a new request
submitted.
• Special status granted in an application carries over to
an RCE of the application.
• A preliminary amendment may be filed along with the
request, but must be indexed with the document
description “preliminary amendment.”
• Amendments filed after a PPH request is granted must
sufficiently correspond to one or more allowable /
patentable claims in the OEE application and the
applicant must submit a statement certifying the
same.

16. Global / IP5 PPH: Misc.
• The Global / IP5 PPH pilot program does not absolve
applicants of all their duties of candor and good faith
under 1.56 and 11.18.
– NOTE: by properly submitting an IDS and OEE work product,
applicant would be considered to have complied with the duty to bring
to the attention of the USPTO any material prior art cited in
corresponding foreign applications
• Participating Offices will use the online systems to
access and assess supporting documents as much as
possible.
• Machine translations are acceptable unless they are of
insufficient quality; then manual translation required.
• PTA is still available to PPH applications.
• While no extension of time is available during request
for PPH treatment, extensions of time are still
available during prosecution of PPH applications.

17. Global / IP5 PPH: For More
Information, please visit:
http://www.uspto.gov/patents/init_events/pph/
http://www.jpo.go.jp/ppph-portal/aboutpph.htm