Patent Prosecution Highway and its Application

By Dou Xiarui, Senior Patent Agent, IP Department, TASLY PHARM Huang Dehai, Partner, Tsingyihua Intellectual Property LLC Publication,[Patent] Article,Read 5084 Times

In line with the explosion of global patents, applications all over the world are increasing rapidly, giving more and more pressure to patent examination in major countries and regions. As the America Invents Act (AIA) is being implemented in the U.S., the world’s largest patent power is changing its more-than-100-year-old first-toinvent scheme to conditional firstto- file, indicating a tendency of “harmonization” in examining and evaluating systems of the countries and regions of the world, which means a procedural breakthrough to some extent of the basic framework in those individual countries and regions. Thanks to the efforts of JPO and USPTO, the PPH system has come into being and been widely applied.


I. Basic idea of PPH

Patent Prosecution Highway (PPH) is a procedural mechanism to accelerate patent examination in countries participating in bilateral or multilateral international agreements. Specifically, an applicant having first filed an application with an Office of First Filing (OFF) for which at least one or more claims are determined to be patentable, may request an Office of Second Filing (OSF) for accelerated examination of corresponding applications.


Under this mechanism, once a patent office of the original application or of earlier examination decides to approve for patent, the corresponding application, upon request of the applicant, may be admitted into such accelerated examination mechanism in another participating patent office under certain conditions.


It should be pointed out, however, that PPH is not a mechanism of mutual recognition among countries for substantive issues, but merely an accelerating mechanism for applicants to facilitate the examination process; the individual countries will still have to go through the substantive examinations or other examination procedures on the patent applications pursuant to their respective patent laws.


II. Basic models

In term of basic framework, PPH can be either conventional (or general) PPH or PCT-PPH. In the former, the patent office of a given country is the OFF on the basis of whose opinion allowing patent, a request may be made to an OSF for accelerated examination of a corresponding application; whereas in the latter, a PCT applicant may, in light of the written opinion or an international preliminary examination report from the International Searching Authority or the International Preliminary Examining Authority confirming at least one claim as patentable, request for accelerated examination in the national phase in the relevant country or region.


Conventional PPH can be made through Paris Convention route (Paris route) or PCT route, depending on different OFF applications. The Paris route means that when an OFF application in its priority period enters the OSF via Paris Convention, the applicant may request that the OSF accelerate the application examination under certain conditions. For PCT route, when both the application in the OFF and the corresponding application in the OSF are filed and enter their national phase as PCT applications, the applicant may request that the OSF accelerate the examination under certain conditions. (See Charts 1 and 2 below)


The fundamental principle for the above three models, no matter which, is that an applicant may request acceleration with regard to his subsequent application in a national or regional office only after a favorable patentability opinion is issued on his original application.


III. Advantages

PPH may benefit applicants in participating countries in the following ways:

1. Accelerated examination

According to PPH portals worldwide, taking the U.S. data between January and June 2013 as example, the average time for receiving the first office action is 5.8 months for conventional PPH applications, 5.6 months for PCT-PPH applications, and 18.8 months for all applications (including both PPH and non-PPH applications, same below); the average time for conventional PPH from beginning to end is 11.4 months, 9.9 months for PCT-PPH applications, and 30.7 months for all applications on average.


2. Enhanced certainty

Considering that full credit will be given in all participating to the OFF search results and favorable conclusions, patent allowance rates by the PPH route, though not a mutual recognition mechanism, will in reality be significantly increased. Take again the U.S. example according to PPH portals worldwide, the average approval rate is 86% for conventional PPH applications, 88% for PCTPPH applications, and 53% for all applications on average.


3. Reduced prosecution cost

A PPH request involves no or a minimal fee. Among the PPH pilot programs that have been initiated, only the Korean Intellectual Property Office (KIPO) requires a PPH fee, but all other patent offices do not.


More importantly, PPH substantially reduces prosecution cost in that (1) PPH involves far fewer office actions per application translating as fewer responses, and therefore less attorney cost, and extension fees, etc. In Japan, the average office actions are 1 for conventional PPH applications, 0.43 for PCTPPH applications, and 1.1 for all applications; the allowance rate by the first action is 22% for conventional PPH applications, 65% for PCT-PPH applications and 15% for all applications. (2) As mentioned, applications that are filed in the PPH route have an allowance rate higher than in the existing route, thereby reducing subsequent procedures and fees, such as the reexamination fee in China or the cost of the request for continued examination (RCE) and appeal in the U.S.


Moreover, speaking of the overall benefit to society, PPH provides an opportunity for participating offices to mutually leverage the examining and searching resources of each other, to increase the efficiency, reduce repetitive works, improve the patent quality, and realize the effective and sufficient utilization of global examination resources.


IV. Application requirements

By September 2013, the State Intellectual Property Office of China (SIPO) has concluded bilateral PPH agreements or initiated PPH pilot programs with 12 countries, including Japan, U.S., Germany, South Korea, Russia, Denmark, Finland, Mexico, Austria, Poland, Singapore and Canada. Among them, the agreements with Japan, U.S., Russia, Finland, Austria, Poland, Mexico, Denmark and South Korea involve both conventional PPH route and PCT-PPH route. In October, China entered into PPH agreements with Portugal and Spain. Thus, Chinese applicants may, pursuant to these agreements, file PPH requests in a relevant route in any of the above countries. For filing a PPH request, the basic requirements are as follows:

1. Timing

The participating countries have different provisions with respect to the timing of filing PPH requests.


In Japan, PPH requests must be filed before the Japan Patent Office (JPO) starts to examine the corresponding application in the U.S. Patent and Trademark Office (USPTO), and provides no PPH fast track for provisional, plant variety or design applications, nor in the reexamination procedure. In South Korea, KIPO requests that PPH application be filed after or simultaneously with an application for examination, and the PPH application may be filed before or after the examination starts. In China, regarding the timing for filing PPH requests, SIPO requires that the corresponding application must have been published; PPH requests must be filed after the corresponding application enters the substantive examination phase or at the same time when the substantive examination request is filed; and the examination has not begun in SIPO when the PPH request is filed.


2. Full correspondence between claims

For the PPH fast track, the scope of claims filed in the OSF must be narrower than or equivalent to the scope of corresponding claims determined allowable or patentable in the OFF. This “corresponding” restriction is comparatively stringent, in that it requires identical wording or in the case of similar wording, gives consideration only to difference in translation or the claim format. Compared with patentable claims in the corresponding application in the OFF, the corresponding application in the OSF must not include any new or different matter.


For example, medical treatments are patentable in the U.S., but are not allowed in China as they are deemed as prohibited under Article 22 of the Patent Law. As a result, when they enter China, these claims are often converted into product or applicationrelated claims, to adapt to the legal practice in China. However, such changes will often be considered incompliant with the correspondence provisions and cannot be fast tracked in the PPH route.


3. Documents required

Similar to the different timings required to raise PPH requests, documents required for PPH also vary in different countries.


Generally speaking, i n the conventional PPH route, the required documents are: (1) a PPH request form; (2) copies with translation of all office actions in the OFF; (3) copies with translation of all claims allowed in the OFF; (4) copies of prior art references cited by the examiner; and (5) an explanation of the corresponding claims, or a list of corresponding claims. In the PCTPPH route, the required documents are: (1) a PPH request form; (2) a copy and translation of the latest international work product; (3) a copy and translation of all claims that are patentable or allowable in the latest international work product; (4) a copy of prior art referenced by the examiner; and (5) an explanation of the correspondence between claims, or a list of corresponding claims.


To make it more convenient for applicants, a few patent offices have adjusted their document requirements. For example, JPO provides that in the conventional PPH route between Japan and China, an applicant does not need to submit the copy of referenced document if it can be accessed via the records system of SIPO or if it is a published patent; in the PCT-PPH route, an applicant does not need to submit a copy with translation of the latest international work product or a copy and translation of claims that are determined patentable or allowable, if such international work product or claims can be accessed via the PATENTSCOPE or the patent literature.


V. Latest development

The new PPH system, originally between the U.S. and Japan, is now joined by more countries and growing very fast. The continuous growth brings more variations.


Taking the PPH Mottainai model for example, China has only a PPH Mottainai agreement with Canada. The model breaks through the “original application” request, so that the scope of compliant PPH petitions is expanded. Under the PPH Mottainai model, an applicant may request any office for accelerated examination on the basis of any earlier examination opinion given by another participating office that receives an application from the same patent family, regardless of the filing sequence of the applications. The purpose is for applicants to use the system more flexibly and to expand the scope of applications potentially eligible for the PPH.


For another example, the PPH 2.0 system, as proposed by the U.S., further streamlines the requirements and becomes more user-friendly. It gives no regard to priority as in the Mottainai program, thereby expanding the scope of PPH-qualified applications. On the basis of the work product of any participating office, using the OEE-OLE concept, it only requires that an application stem from the same patent family and that the patent specification support the subject matter to be protected.


In late September 2013, the world’s five largest Intellectual Property Offices (IP5) - the European Patent Office (EPO), JPO, KIPO, SIPO and USPTO-agreed to launch a comprehensive IP5 Patent Prosecution Highway (the PPH) pilot program as of January 2014. Under the program, applicants whose patent claims have been found to be patentable by one office may ask for accelerated processing of their corresponding applications pending before the other IP5 offices. Requests to use the PPH can be filed in any of the IP5 offices on the basis of PCT or national work products established by the IP5.


VI. Significance to Chinese companies and their patents
 
Because PPH greatly reduces the time and cost of patent prosecution, i t is a great help for Chinese companies to deploy their patents in foreign countries. The PPH route is an advantage particularly for those that upgrade their technology fast and have a large volume of overseas patent applications.


However, although it speeds up patent prosecution, PPH has many restrictions, especially with respect to provisions on the timing to file PPH requests and the correspondence between claims. For this sake:
First some applications will not be able to enter the PPH route because their appropriate timing is lost. For example, China, U.S. and Japan provide that no request to accelerate the prosecution may be filed after the national substantive examination has begun. Chinese companies must fully understand the examination systems of both China and other PPH countries. For another example, in China, applicants may request publ i cation and subst ant i ve examination of their applications at the same time. So the provision can be used to accelerate the prosecution in the OFF so that applicants have sufficient time to enter the PPH route in any other country.


Second PPH requires very strict or almost word-for-word correspondence between claims. Later applications can only contain claims identical or narrower in scope than those in earlier applications. They also must not introduce any new or different matter. As different patent provisions and examination criteria exist in different countries, such as, medical treatments are patent-eligible in the U.S. but not in China, therefore theoretically the same technical scheme may not receive the same scope of protection in different countries. It is likely that applicants who want to pursue the fast PPH track in one country will lose the expectation of a larger scope of protection for their claims in other countries. Under PPH, if an earlier application has a narrow scope of claims allowed, the scope wil l become narrower in other countries.


For the above two issues, these authors believe that in taking the PPH route, Chinese companies can take the following measures:
First they should classify their patents to deploy in foreign countries. This is necessary, particularly in industries where technical upgrading is fast. For patents that are urgently needed and accompany the launching of any products in a foreign country, the PPH route should be taken first. For core or underlying patents that have a bias on the scope of protection, applicants should make use of the different examination criteria in different countries, in order to obtain the maximum scope of rights.


Second applicants should adapt themselves to the requirements of the OFF with respects to the selection of patent offices and timeframe. To successfully run into the PPH track, they need to take the overall picture into consideration, unde r s t a n d t h e rhythm and sequence of patent prosecution in different countries, and consider different technical schemes. They should ensure that they will receive positive patentable opinions with a larger scope of protection in the OFF, before the substantive examination begins in any other country. This, however, places higher demand on the professionalism of internal patent managers or outside patent agents.


Finally, in addition to the careful selection of the OFF, applicants should be ready to analyze the examination opinion from the OFF and determine the future trend of their applications, the granting possibility and how big or small the allowed scope of claims will be. On that basis, they should go on to adjust their global prosecution strategy, if appropriate, for their future applications. If an application is more likely to be granted a larger scope of claims, the applicant should communicate with the examiner in a timely manner, to speed up the reply and reduce the actions, and gain more time for the PPH filing. If the prospect is bad or the scope of claims to be granted may be small, the applicant should act timely to change his strategy and follow the common route to enter any other country, in order to obtain a larger scope of protection.


To sum up, as a new procedural system beneficial to applicants, the PPH has come into being with the continuous growth of the global application volume, and the gradual globalization and standardization of the patent system. Chinese applicants should take full advantage of the PPH system to obtain rich intangible assets.


(Translated by Ren Qingtao)


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