Patent Prosecution Highway and its Application

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

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