C.A.G. Insights

The Highway Goes Global

Followers of our newsletter are familiar with the evolution of the Patent Prosecution Highway (“PPH”), from bilateral agreements providing for the acceleration of a patent examination in the office of second filing after the office of first filing finds allowable subject matter, to PCT PPH which allows the same acceleration based on a favorable examination in the international stage.  Now, the PPH evolution continues with the new Global Patent Prosecution Highway (“GPPH”), providing applicants with another cost and time saving tool for the management of global patent prosecution.

As previously reported, the PPH program was developed to promote fast-track patent examination procedures and allow patent offices from around the world to take advantage of work already done by other offices.  The PPH was one of the initiatives undertaken by the USPTO to help with the always-increasing load of patent examinations.

The PPH program as initially constructed involves bilateral agreements between other patent offices that provided for the fast-tracking of an application in a second country when the patent office in the first country has found allowable claims.  This “standard” model of the PPH involves a one-way relationship between an application filed in an office of first filing and an application filed in an office of second filing.  As long as one claim is allowed in the office of first filing, the application filed in the office of second filing can be advanced out of turn.  This office of first and second filing relationship made the first iteration of the PPH a one-way road with not many off ramps.

The PPH concept next took a new direction with what is referred to as Patent Cooperation Treaty (“PCT”) PPH agreements.  These PCT PPH agreements do not focus on an office of first filing and an office of second filing.  Rather, the PCT PPH program focuses on what office issued the PCT Written Opinion and/or the International Preliminary Examination Report (IPER).

The PCT has long been a favorite first step for international patent prosecution.  An applicant can file a single PCT application designating all PCT member states as a vehicle for a first consolidated examination by a single patent office.  This single office, designated by the applicant, will issue a Written Opinion detailing the patentability of the invention as judged by the designated office.  The designated office will also later issue an IPER likewise directed to patentability.   The Written Opinion and IPER provide for a unified and publicly available examination of the application before it enters national stage examinations in various individual patent offices.  Under the PCT PPH program, the Written Opinion or IPER can provide additional benefit in certain national stage filings. The PCT PPH program allows a US applicant to apply for PPH fast-track procedures provided that a patent office with which the USPTO has a PCT PPH agreement finds that at least one claim has novelty, inventive step, and industrial applicability in either a Written Opinion or IPER issued by that office.

Now comes the GPPH, which is like the standard PPH except that it no longer matters which patent office first allows claims.  Under the GPPH an applicant can petition to accelerate any application in a participating country if any other participating country finds allowable claims, without regard to where the application was first filed.  To date the offices involved in the GPPH are  Australia (IP Australia), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), National Board of Patents and Registration of Finland (NBPR), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office (IPO), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), United Kingdom Intellectual Property Office (IPO), and United States Patent and Trademark Office (USPTO).  More offices are expected to come on line in the future to add to this impressive list.

Using the GPPH can streamline international patent prosecution, thus saving money and leading to earlier issued patents.  Based on our experience with the standard PPH and PCT PPH, many patent offices defer to the examination conducted in the first office and quickly grant a patent.  Further, in many instances the GPPH route may obviate the need to file a PCT application altogether.  As long as the applicant is only interested in GPPH countries, using direct national stage filings in the countries of interest under the Paris Convention makes economic sense under the GPPH.  The first examining office in essence performs the task of a unified first examination (like in the PCT), but the expense of PCT prosecution is avoided.

Stay tuned for more developments, and, in the meantime, ride the highway.  It’s global!