Today patent offices across the world are seeing increasing number of patent applications.
Globalization in almost all the sectors like commerce, technology, education etc. has led to the increase in patent applications. It has been observed that same patents are filed in multiple countries, increasing the redundancy of applications. This has led all the patent offices and officers to work together in cooperation. It is believed by many patent examiners and commissioners that this type of co-operation is very crucial to increase productivity .In addition to this large number of pending applications and backlogs has made this cooperation a must and giving rise to what is known as Paten Prosecution Highway.
Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing1.
Enthusiasts of this program often cite below advantages:
PPH, through the exploitation of all the search/ examination-related information of the OEE,
Delivers lower prosecution costs.
(2) Supports applicants in their efforts to obtain stable patent rights efficiently around the world.
(3) Reduces the search/examination burden and improves the quality of the examination of the major patent offices in the world.
The USPTO has reported a PPH application allowance rate of about 94%, or more than double the usual allowance rate, and the average number of office actions is approximately half that of other U.S. patent applications. The CIPO has reported that approximately 35% of the PPH applications were deemed allowable without an examiner's report.
The Patent Prosecution Highway was first developed between the USPTO and the Japan Patent Office ("JPO") as a pilot program that began on July 3, 20062. This Pilot program was started to explore the way to reduce burden on both the US and Japan patent office for the same patent filed in both the countries. The sole purpose of this pilot project was to expedite the patent examination in the second office by considering the examinations results of the first office of applications if the patent application was found to be patentable in the office of first examination.
Although PPH is believed to be a good initiative for providing high quality patent examination with less cost and lead time it has few reproach also.
1. The most relevant denigration of all current Patent Prosecution Highway programs is that all claims in the office of second filing must be limited to the claim scope allowed in the office of first filing, which could result in narrower claims than if prosecuted separately in each country. This major limitation may not be optimal for many applicants who prefer to have broadest scope of claims, which may differ from country to country due to the differences in patent laws and local practice. Another criticism is that filing applications under all Patent Prosecution Highway programs could increase initial costs due to the filing requirements, which involve compiling specific documents, writing letters, and filling out petitions3.
2. Country-Specific Practices that Reduce the Allure of the Patent Prosecution Highway in view of the different patent laws and practices of each participating country; there are distinct disadvantages in choosing to use the Patent Prosecution Highway in each participating office4.
3. Applicants cannot take advantage of the PPH if the first favourable examination results are from an office of second filing. To address this shortcoming, eight patent offices agreed to launch an enhanced PPH program called PPH MOTTAINAI.
4. There is also a concern that negative comments by the examiner in an Office of Second Filing (OSF) might be used during litigation against the patent granted in the Office of First Filing (OFF).
To make the PPH process more accessible and simplified, CIPO and 16 other intellectual property offices have partnered in a Global PPH pilot beginning January 6, 2014. Under the Global PPH, one have the option of making a request to any or all of the participating offices based on the work products, including Patent Cooperation Treaty (PCT) work products, from another participating office. Applicants may make requests to CIPO under the Paris Route PPH ("PPH") or the PCT-PPH, depending on the work product from our partner office5.
PPH and GPPH programs seems to bid benefits like reduction in application redundancy in Partner patent offices, speeds up the entire process to give expedited patent prosecution, better allowance rate and a significant cost reduction mechanism. However due to above mentioned pot holes in this highway, it is advisable to be careful while opting to have a ride on this highway as it may become a bumpy ride.
1. Source http://www.uspto.gov/patents/init_events/pph Last visited 26-Oct-2014
2. http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf Last visited 26-Oct-2014
3. The Patent Prosecution Highway: Is Life in the 'Fast Lane' Worth the Cost? By ALICIA PITTS AND JOSHUA KIM.
4. The Patent Prosecution Highway: Is Life in the 'Fast Lane' Worth the Cost? By ALICIA PITTS AND JOSHUA KIM
5. http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02160.html Last visited on 26-oct-2014 http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_ wr02160.html Last visited on 26-oct-2014 http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02160.html Last visited on 26-oct-2014
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