The Patent Prosecution Highway expedites the allowance of a patent application. When a claim of a patent application in the United States is allowed, a PPH request can be filed for a patent application filed in a foreign patent office. The PPH request allows the examiner of the foreign patent office to allow the case based on the allowance given by the U.S. examiner.
The Patent Prosecution Highway is a work work-share arrangement. The examiner in the foreign Patent Office can allow the case without evaluating the novelty and nonobviousness of the claimed invention. They are relying on the examination work product of the examiner who already did the work.
When do request consideration under the Patent Prosecution Highway?
The request for consideration under the Patent Prosecution Highway must be filed before examination in the office of later examination (OLE). Also, the request cannot be filed until after the examination has occurred in the office of earlier examination (OEE) and a claim has been allowed.
How to request consideration under the Patent Prosecution Highway?
No fee is required when filing the request for consideration under the Patent Prosecution Highway. You also need to fill out the Patent Prosecution Highway Request form.
The form requires you to submit:
- OEE Work Product and Translation: any office action in the earlier examined application plus their translation if they are in a foreign language.
- References Cited in OEE Work Product: any Information Disclosure Statement.
- Claim Correspondence Certification Statement and Table: Identification of the allowed or granted claim in the foreign patent application to the pending claim of the domestic patent application.
How to take advantage of the patent prosecution highway?
One of the strategies for taking advantage of the Patent Prosecution Highway is to expedite the examination of your patent application. For example, you would file a Track 1 request. The goal is to get allowed or granted claims as fast as possible. After getting allowed or granted claims, these claims would be exported to applications in foreign countries with a Patent Prosecution Highway request. The patent offices in those foreign countries are supposed to rely on the examination conducted by the United States.
In this manner, you would spend less money. You would argue about patentability domestically with the U.S. examiner first. Any arguments about the merits of the claims would be bypassed in the foreign patent offices.
How to increase patentability with the Patent Prosecution Highway?
The Patent Prosecution Highway could be used to increase the patentability of your invention. You would file your application in a foreign Patent Office first with a higher allowance rate compared to the USPTO.
In theory, the Patent Office of the foreign country would allow your claims at a higher allowance rate. Once you received your notice of allowance in the foreign patent office, you would import those claims into the United States in your U.S. patent application.
Which countries are part of the Patent Prosecution Highway?
In general, almost all of the developed countries are part of the Patent Prosecution Highway. For a complete listing, click on PCT – Patent Prosecution Highway Program.
Here is a partial listing of participating Patent Offices: