This week the U.S. Patent and Trademark Office announced its sixth “patent prosecution highway” (PPH) program to fast-track global patent examination procedures when the patent office of any participating country has deemed a patent application to be allowable.
Under the PPH programs, a patent application that has received allowance of at least one claim in a participating country may serve as the basis for “fast tracking” related applications (i.e., applications sharing common priority) in other participating countries. The “fast tracked” application may not already be undergoing examination, and the “fast tracked” application must be amended so that its claims sufficiently match the allowed claims. Fast tracked applications will receive priority at the USPTO (or other PPH office) and in most cases will be moved up in the queue for faster examination.
To date, the USPTO has established PPH programs with the following countries:
- Japan: full-time program implemented in January 2008
- United Kingdom: one-year pilot established September 4, 2007
- Canada: one year pilot program began January 28, 2008
- Korea: one year pilot program began January 28, 2008
- Australia: one year pilot program began April 14, 2008
- Europe: one year pilot program announced April 28, 2008
Some of the participating counties also have their own PPH programs with the Japan Patent Office. For example, PPH programs are available for Japan-Germany, Japan-Korea, and Japan-UK.
Forms for requesting participation in the USPTO’s Australia, Canada, Japan, Korea, and UK PPH programs are available on the USPTO website. Forms for participation in the US-Europe PPH program are expected soon.
Patent applicants who want to take advantage of a PPH program should file an application in the common application format that was recently agreed upon by the USPTO, the Japan Patent Office, and the European Patent Office. Each patent office will implement the format in 2009. The format is for the most part consistent with current U.S. format, although it requires additional features not presently required by the USPTO. (For example, each claim must be labeled as “claim 1”, “claim 2”, etc., and SI units must be used when describing measurements.)
The PPH programs can help speed prosecution of a global patent portfolio. U.S. patent applicants may consider also filing in countries having shorter prosecution delays (such as Korea) in order to obtain faster examination in the U.S. under the PPH programs. In addition, the PPH programs may reduce the number of Office Actions in a worldwide patent family, as patent examiners will have the chance to see the conclusions of other examiners before starting review of an application.