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New Global Patent Prosecution Highways to Accelerate Examination of Patents

Authored by Julian Crump.

The Patent Prosecution Highway (PPH) gives applicants the opportunity to accelerate the examination of their patent applications in multiple countries once they have received a favourable report in one country.  This is useful to inventors and businesses because it allows foreign patents to be granted sooner, and by having IP offices make use of the work products of other offices also yields cost savings and other efficiencies to the benefit of all stakeholders.  In January 2014, further improvements to the system will be launched in the form of the Global Patent Prosecution Highway (GPPH).

The first PPH agreements were bilateral, allowing favourable examination reports in the office of first filing to be employed in a second office to short-circuit the examination process.  Since 2006, 30 separate bilateral PPH arrangements have been implemented, resulting in a complex network of agreements that is sometimes called "The Spaghetti Bowl".  The problems with these early PPH agreements is that they required an applicant to have a positive examination report in his office of first filing before he could accelerate processing in the office of second filing, which was not always possible, especially if the first application was withdrawn in favour of an international application under the PCT, and there were disparate formalities requirements under different agreements, leading to even greater complexity.  Subsequent developments were the PCT-PPH, allowing users to make use of a favourable international preliminary examination report in participating offices, and, most significantly, PPH 2.0 or "Mottainai" which allowed applicants to make use of any positive examination report - not just one from the office of first filing.

Adoption of the PPH route has been patchy, perhaps because of the complexity of the system and the unavailability of the more flexible versions in some offices.  The adoption by the European Patent Office of PPH Mottainai in January 2012 was a significant breakthrough for European applicants, who often do not file European applications first, preferring instead to file national applications in their home country, allowing them to make use of positive EPO examination reports in Japan and the United States (and elsewhere).

In terms of the value of PPH, the statistics speak for themselves: Over the period January to June 2013, while 53% of all US patent applications were issued, the issuance rate for PPH applications in the US increased to 88%, with the average delay to the first office action being shortened from 18.8 months to only 5.8 months.  Similar results are seen in other offices.

At a meeting with the Commissioner of the Japan Patent Office in December 2013, I learned that on 6 January 2014, the GPPH will be implemented by the IP offices of 13 states:  including the US, Japan, Korea, the UK, Australia and Canada (but not unfortunately the EPO).  This will build on the Mottainai system, allowing applicants to make use of a positive report in any of the participating offices to expedite examination in the other offices, but with a standard set of formalities requirements which should be much simpler for applicants and their representatives to use.  No longer will the PPH system resemble a bowl of noodles!

The JPO Commissioner also advised that the IP5 offices (the EPO, USPTO, JPO, KIPO, SIPO) are working on an IP5 PPH, details of which should be available early next year. The involvement of the EPO and SIPO in this project will be good news for applicants in those countries.  It is expected to operate in a manner similar to the GPPH.

With these developments, the PPH is set to become a valuable tool for patent applicants wherever they are located who wish to accelerate the examination of their patent applications in multiple jurisdictions.

 

 

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Author

Julian Crump