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 offices—the 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 32 patent offices, and
23,465 PPH requests were filed.2 The top OLEs were: (i)
the USPTO, with 7,462 requests, (ii) the SIPO, with 3,951 requests,
and (iii) the JPO, with 3,014 requests. By way of comparison, the
EPO was OLE in 1,738 cases, and the GPTO was OLE in 640
cases.
With regard to acting as OEEs, the top-three list differs
dramatically: (i) the JPO had 9,790 cases, (ii) the USPTO had 6,858
cases, and (iii) the EPO had 2,432 cases. By comparison, the GPTO
was involved in just 94 cases as OEE.
Globalization of Patent Prosecution Highways
On January 6, 2014, the Global Patent Prosecution Highway
("GPPH") pilot was launched, and as of July 6, 2015,
there are 21 patent offices involved in the GPPH pilot. The patent
offices of the following countries/regions are participating in a
truly global cooperation: Austria, Hungary, Russia, Australia,
Iceland, Singapore, Canada, Israel, South Korea, Denmark, Japan,
Spain, Estonia, Nordic Patent Institute, Sweden, Finland, Norway,
the United Kingdom, Germany, Portugal, and the United States.
In addition, the GPPH includes work carried out under the Patent
Cooperation Treaty ("PCT"). This allows an applicant to
request accelerated processing based on a written opinion or
examination report that was prepared by one of the participating
national offices acting as an International Search
Authority/International Preliminary Examination Authority for a
corresponding PCT application.
Even though the patent applications for all PPH programs are
examined in a similar way, most PPH programs regulate just the
cooperation between two, or between a few selected patent offices;
thus, the qualifying requirements vary slightly among PPH programs.
The GPPH pilot uses a single set of qualifying requirements and
aims to simplify and improve the existing PPH network so that it is
more accessible to users, thereby simplifying the existing PPH
network.
According to GPPH regulations, each participating patent office can
continue its various PPH cooperations under the GPPH. For example,
the GPTO, after joining the GPPH on July 6, 2015, continues to
maintain its bilateral cooperation under the PPH with the SIPO,
which does not take part in the GPPH. This coordination of the GPPH
pilot with other PPH programs provides a high degree of flexibility
for both applicants and patent offices.
Eligibility Requirements of the Global Patent Prosecution Highway
Patent offices will provide accelerated processing under the GPPH pilot for applications meeting the following requirements:
- The applications before the OEE and the OLE have the same earliest date (which may be the priority date or the filing date).
- The OEE has found at least one claim to be allowable. The indication that a claim is allowable will be provided as an explicit statement in any substantive work product from the OEE. Claims determined to be novel, inventive, and industrially applicable in PCT work products are deemed allowable in this document.
- All claims presented for examination under the GPPH pilot must correspond sufficiently to one or more of the claims found allowable by the OEE.
- he OLE has not begun substantive examination of the application. However, OLEs may still choose to allow GPPH requests filed after examination of the OLE application has begun, depending on the particular circumstances and needs of the OLE and its stakeholders.
- A request for substantive examination must have been filed at the OLE, either at the time of the GPPH request or previously.
To request GPPH processing, applicants need to file at least the following at the OLE:
- A completed GPPH request form,
- Acopy of the claims found to be allowable by the OEE (if the copy has not already been made available to the OLE), and
- A copy of the work product relevant to the allowability of the claims (if the copy has not already been made available to the OLE).
However, some participating offices require further information such as translations, a claim correspondence table, etc.
Effect of the Global Patent Prosecution Highway on a National Patent Office in Europe
The goal of the European Union ("EU") is to offer a
truly European patent that has a unifying effect in the 25
participating Member States of the 28 EU countries. The EPO will
become responsible for this patent. The PPH programs might assist
the EU national patent offices in remaining attractive to
applicants or even becoming more attractive despite a kind of
competition with the EPO. The GPTO serves as a good example of this
effect.
Since 2013, the GPTO has received more direct filings than the EPO.
In 2014, approximately 66,000 first applications were filed with
the GPTO,3 and about 60,000 first applications were
filed with the EPO4 (filings under the PCT are not
included in these numbers). This is remarkable, given the strong
competition by the EPO.
The GPTO has taken various measures to increase its popularity and
attractiveness. As a national patent office, its ability to adapt
to the permanently changing IP world might be faster than that of
the EPO. For example, in 2013, the Act to Amend the German Patent
Act relaxed the translation requirements at the GPTO, so the GPTO
can now perform searches and first examinations based on English
and French application documents. The search report includes a
substantive statement on patentability comparable to the search
opinion of the EPO. Thus, the same service is now provided by the
GPTO for less than one-fourth of the official fees.5
Perhaps more important is the effect of the acceptance of foreign
language application documents and the preparation of search and
examination reports in English and French, in addition to German,
for existing and future cooperation with other patent
offices.
Further, when the demand for work sharing between the national
patent offices was recognized at the GPTO, due to the amount of
applications filed in the multiple national offices and hence the
increasing cost and associated workload, the GPTO started its first
PPH cooperation with the JPO and the USPTO approximately seven
years ago. By 2014, the GPTO already maintained cooperation with
nine patent offices through its PPH network covering the following
countries: Austria, Finland, South Korea, Canada, Japan, the United
Kingdom, China, Singapore, and the United States.
By joining the GPPH program on July 6, 2015, the GPTO extended its
PPH network by 12 more patent offices, so fast-track prosecution is
now also possible in the following patent offices: Australia,
Iceland, Portugal, Denmark, Israel, Russia, Estonia, Nordic Patent
Institute, Spain, Hungary, Norway, and Sweden.
The main advantage of the GPPH over the PPH at the GPTO is not only
the newly extended network of cooperating patent offices but also
the existence of just one single arrangement with one single set of
qualifying requirements that is applied by all participating
offices, instead of multiple bilateral arrangements with different
sets of qualifying requirements. In addition, the GPTO has not
introduced any fees for GPPH processing thus far, which is in
keeping with the GPTO's existing practice of processing PPH
requests free of charge for the applicants.
Filing a patent application initially with a participating national
office such as the GPTO and then requesting fast-track prosecution
through the GPPH at selected participating national offices can be
quicker and less expensive than filing internationally under the
PCT or filing a European patent application. Thus, both patent
offices and applicants benefit from the GPPH pilot.
Footnotes
1 Jones Day Commentary, May 2010 "Patent Prosecution Highways: Accelerating The Patent Examination Process."
2 "Cumulative Number of PPH Requests, 2014," Patent Prosecution Highway Portal Site.
3 "Jahresbericht 2014," Deutsches Patent- und Markenamt.
4 "European patent filings," European Patent Office.
5 Holzwarth-Rochford, DPMA konkurriert stärker mit dem EPA: Der Kampf um Erstanmeldungen [Stronger competition between GPTO and EPO—The fight for first filings]; GRUR-Prax, vol. 5, p. 374-376.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.