Advantages and considerations for patent prosecution in the US, EU, China, and Singapore under the Patent Prosecution Highway

The Patent Prosecution Highway, or PPH, is a set of initiatives implemented by cooperating patent offices throughout the world to speed up patent prosecution in the countries where the cooperating patent offices are located. PPH enables cooperating patent offices to share information and profit from the efforts of other collaborating patent offices, minimizing examination workload and increasing patent quality.

If a patent application previously submitted with a participating patent office satisfies specific standards, it can be fast-tracked in another collaborating patent office under PPH. This article gives a quick summary of the advantages of submitting patent applications under PPH, as well as the standards that patent applications must meet in order to be eligible for PPH.

The Advantages of Taking Part in PPH

Patent applications filed under PPH can minimize the time it takes to prosecute patent applications. According to figures given by the China National Intellectual Property Administration (CNIPA), the average time to prosecute patent applications filed under PPH is roughly 11.9 months from initial submission to getting a final decision (e.g., permission or abandonment). Non-PPH patent applications, on the other hand, take an average of 22.7 months to prosecute. Furthermore, applicants may anticipate an initial office action in just 2.7 months after filing PPH patent applications, comparing to 12.5 months for non-PPH patent applications, according to data. Furthermore, submitting patent applications under PPH may save applicants money because PPH patent applications only require one office action on average before issue. Finally, PPH patent applications have an average acceptance rate of around 87.8%, while non-PPH patent applications have an average approval rate of around 76.1 percent.

Patent applications submitted with the US Patent and Trademark Office (USPTO) under PPH get comparable advantages. In the United States, for example, applicants can expect an initial office action from the USPTO within two months of filing. The USPTO typically takes a year or more to provide an initial office action for non-PPH patent applications. As can be seen, submitting patent applications under PPH has several advantages. As a result, applicants are recommended to check whether patent applications can be submitted under PPH in jurisdictions of interest when contemplating filing patents worldwide.

PPH Eligibility Requirements

Although the qualifications for participating in PPH vary significantly among the member patent offices, some common guidelines apply. To be eligible for PPH at a participating patent office of interest, applicants must demonstrate that: (1) a related patent application has been determined to be patentable by a participating patent office; (2) the related patent application includes at least one patentable claim; and (3) the patent application claims must sufficiently correspond to the allowed claims of the related patent application at the time of filing. Once these prerequisites have been satisfied, applicants can apply for PPH by submitting a PPH request and supplying the following information to the cooperating patent office: (1) a copy of the associated patent application’s communication; (2) a copy of the related patent application’s approved claims;  and (3) a claim correspondence table indicating relatedness between the claims of the patent application and the allowed claims of the related patent application. A survey of PPH requirements for various countries is provided below.

China:

The CNIPA is a PPH participant. The following are the requirements for participation in PPH in China: (1) The Chinese application must have the same earliest date as the corresponding Offices of Earlier Examination (OEE) application; (2) the Chinese application must have been published; (3) the OEE application must contain at least one patentable claim; (4) the claims of the Chinese application filed with the CNIPA must sufficiently correspond to claims deemed patentable in the OEE application; and (5) substantive examination of the CNIPA application has not yet begun.

Applicants who meet the aforementioned criteria can submit a PPH request to the CNIPA. (1) Chinese translations of the OEE application’s allowable claims; (2) a list of references cited during prosecution of the OEE application; (3) copies of non-patent literature references cited during prosecution of the OEE application; (4) a claim correspondence table with explanations; and (5) copies of correspondences relevant to substantive examination for patentability.

The United States:

The USPTO is a PPH participant. The following are the requirements for participation in PPH in the United States: (1) The US application and the corresponding Offices of Earlier Examination (OEE) application have the same earliest date; (2) the OEE application has been determined to contain at least one patentable claim; (3) the claims of the US application filed with the USPTO sufficiently correspond to claims deemed patentable in the OEE application; and (4) substantive examination of the US application has not yet begun.

Applicants can submit a PPH application with the USPTO if the preceding requirements are satisfied. The PPH request must be accompanied by: (1) the OEE application’s allowable claims; (2) a list of references cited during prosecution; (3) copies of non-patent literature references cited during prosecution; (4) a claim correspondence table showing sufficient correspondence; and (5) copies of correspondences relevant to substantive examination for patentability.

European Union: 

PPH welcomes the European Patent Office (EPO) as a member. The following requirements for participation in PPH in European Union countries are: (1) The European application and the associated Offices of Earlier Examination (OEE) application have the same earliest date; (2) the OEE application has been determined to contain at least one patentable claim; (3) the claims of the European application filed with the EPO sufficiently correspond to claims deemed patentable in the OEE application; and (4) substantive examination of the European application has not yet begun. Where claims of OEE applications are of the same or comparable extent to claims of European applications, or when claims of European applications are shorter in scope than claims of OEE applications, the EPO deems claims to have appropriate correlation.

Applicants can file a PPH request with the EPO if the foregoing requirements are satisfied. (1) copies of OEE work products (or latest work products of a PCT application in international phase); (2) a copy of claims considered to be patentable by the OEE; and (3) copies of non-patent publications mentioned in the OEE work products. These documents must be written in at least one of the European Union’s official languages, namely English, French, or German. Machine translations of applications into one of the European Union’s official languages are acceptable. If the EPO considers that the machine translations are insufficient, official translations may be requested.

Although foreign application examination results can be used to support a PPH request before the EPO, applications for which the EPO served as the International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) are not eligible for PPH. This is due to the fact that no work output can be deemed to have been completed by “another” office.

Singapore:

The Singapore Intellectual Property Office (IPOS) is a PPH member. The following are the requirements for participation in PPH in Singapore: (1) The IPOS application and the corresponding Offices of Earlier Examination (OEE) application must have the same earliest date (i.e., the same priority date or filing date); (2) the OEE application must have at least one claim that has been determined to be patentable by the OEE; (3) all claims in the IPOS application must sufficiently correspond or have been amended to sufficiently correspond to one or more claims determined to be patentable by the OEE; and (4) examination on the corresponding OEE application has not yet begun.

Applicants who meet the aforementioned criteria can submit a PPH request to the IPOS. The PPH request must be supported by: (1) copies of all office actions in the OEE application; (2) a copy of the OEE application’s permitted claims; and (3) a claim correspondence table indicating the allowed claims’ relationship to the IPOS application’s claims. At the time of the PPH request, copies of prior art references cited during prosecution of the OEE application are not required. The IPOS, on the other hand, may ask applicants to submit copies of previously cited prior art references. Furthermore, English translations of the OEE application and the authorized claims must be submitted with the PPH request if they are not in English. These translations, on the other hand, do not need to be approved.