The Patent Prosecution Highway (PPH) and the Patent Cooperation Treaty (PCT) are two powerful tools that when used in combination can:
- Expedite the examination of their patent application,
- Increase their chances of obtaining a patent, and
- Lower costs.
What is the Patent Cooperation Treaty?
The Patent Cooperation Treaty (PCT) is an international treaty that allows inventors to file a single patent application that can be used to seek patent protection in over 150 countries. This can be a great way to simplify the process of filing international patents and save money on the cost of filing separate patent applications in each country.
Also, the Patent Cooperation Treaty allows the inventor to delay filing a patent application in multiple countries for up to 30 months after filing in the home country.
What is the Patent Prosecution Highway?
The Patent Prosecution Highway (PPH) is a program that allows inventors to expedite the examination of their patent applications through a work-sharing arrangement between patent offices. In general, if an inventor’s patent application has been granted in a country, they can ask the patent office of another country to allow the patent based on the work performed by the first examiner.
How to use the PCT and the PPH to expedite allowance and reduce the cost of foreign patent protection?
With all this in mind, the Patent Cooperation Treaty and the Patent Prosecution Highway work beautifully hand in hand.
Here’s how.
A nonprovisional patent application is initially filed with the United States Patent and Trademark office. Typically, after filing a nonprovisional patent application, the USPTO will examine the patent application in about 2 years. That’s 24 months after the filing of the patent application.
As stated above, the PCT allows the inventor to delay filing in foreign countries for up to 30 months after filing the first patent application (i.e., PPA or NPA). That gives you 6 months (30 months minus 24 months) on average to have the nonprovisional patent application allowed so that you can request favorable treatment in foreign countries under the patent prosecution highway program.
In order to give yourself the most amount of time, the nonprovisional patent application should be filed with a request to expedite the examination of the patent application. You should receive your first office action within 5 months, not 24 months later. You have 25 months to argue with the examiner to get the patent application allowed.
I know that there are a lot of numbers and math being thrown out there. But, to understand the strategy, please do the math.
Once a notice of allowance is given for the nonprovisional patent application, you can request that the Patent Office in a foreign country grant the same claims that were allowed by the USPTO under the PPH.
If the notice of allowance was given within 12 months after filing the nonprovisional application, the PCT application, the national stage application, and the request under the PPH can be filed. If the notice of allowances was received more than 12 months after filing the nonprovisional patent application, the PCT application has already been filed. You can now file the national stage application with the request for consideration under the patent prosecution highway.
The cost to secure patent protection in foreign countries is greatly reduced because attorney time does not need to be taken to argue with the examiners in each of the foreign countries for patentability. That hard and tedious work was done before the United States Patent and Trademark Office.
As a side note, the provisional patent application shouldn’t be filed to take advantage of the above strategy. The provisional patent application is never examined and can never result in an allowed claim. It only delays the time that you file the nonprovisional application.
The patent prosecution highway and the patent cooperation treaty are powerful tools for inventors to increase their chances of success before the patent offices in foreign countries and to reduce costs.