The Global Patent Prosecution Highway: Enhancing Attractiveness For Applicants And Patent Offices

Author:Ms Dorothée Weber-Bruls, Andreas Holzwarth-Rochford and Matthias S. Euler
Profession:Jones Day

History of Patent Prosecution Highways

During the last couple of years, a considerable number of Patent Prosecution Highway ("PPH") programs between national and regional patent offices were launched. Five years ago, we commented on those involving the European Patent Office ("EPO"), the United States Patent and Trademark Office ("USPTO"), and the Japan Patent Office ("JPO").1 Since then, the programs have been refined and largely expanded. Most PPH programs are initially limited to trial periods of one to three years, so that their feasibility can be assessed. Depending on the outcome of these assessments, the trials are extended or the programs are stopped. However, the assessments of unsuccessful programs are helpful in devising new trial programs. In that way, PPH programs are continuously improved so that the cooperating patent authorities will get the most out of their cooperation. One well-known PPH program, for example, is the IP5 PPH program, which was launched in 2014 for a trial period of three years. Here, the five largest IP officesthe USPTO, the EPO, the JPO, the Koran Intellectual Property Office, and the Chinese Patent Office ("SIPO")cooperate to improve efficiency and address the backlogs in applications worldwide. However, PPH programs are not just limited to the world's largest IP offices. A large number of national offices of various countries around the globe, including the German Patent and Trademark Office ("GPTO"), profit immensely from PPH programs by tightening their cooperation with the various participating patent offices. A PPH provides a framework in which an application whose claims have been determined to be patentable by an Office of First Filing or Office of Earlier Examination ("OEE") is eligible to go through an accelerated examination in an Office of Second Filing or Office of Later Examination ("OLE") with a simple procedure, upon an applicant's request. Thus, under a PPH, the participating offices have agreed that when the applicant gets at least one claim granted by the OEE, the applicant is eligible to request fast-track examination of corresponding claims at the OLE. In this way, a PPH allows the participating patent offices to more efficiently examine patent applications by avoiding duplicating work that examiners in other parts of the world have already done. In addition, it gives applicants advantages to obtain patents faster and more efficiently. In 2014, there were PPH programs involving...

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