Miriam Samis, Israel Patent Attorney and US Patent Agent
Once having filed a patent application, it is sought, in many cases, to move as quickly as possible through examination and onto allowance, thereby bringing certainty to exactly what is covered by your granted patent and to the value represented by the granted claims.
While applicants often file patents in multiple jurisdictions, almost invariably, one of the most valuable patent rights is the US patent. In some cases, an application may already have been allowed in a non-US patent office, while the parallel US application may still be awaiting substantive examination. In the early part of this century, it was realized that the findings of an examiner in a parallel jurisdiction could, in some cases, be used to expedite the examination of a US application, thus leading to the initiative known as the Patent Prosecution Highway (PPH), which was introduced in 2006. This initiative helps to facilitate faster examination of US applications having corresponding patent applications filed in participating offices, potentially shortening the time to grant.
How it Works:
An applicant whose patent application has been allowed by a participating patent Office (for example, the Japan Patent Office, Israel Patent Office, European Patent Office, or others) can request expedited examination of their US application based on the corresponding patent office’s decision. Notably, there is no Official fee for requesting PPH processing in the US
Criteria for Eligibility:
To be eligible for PPH in the US, an application must satisfy the following criteria:
1) The US application shares a common earliest priority date with the application upon which the PPH request is based (the “earlier application”).
2) The earlier application has been allowed or notice of allowability received.
3) The claims of the US application correspond sufficiently with the claims allowed by the examining office of the earlier application, and are in the same claim category.
4) Substantive examination of the US application must not have begun – which in the US means anytime up until issuance of the first non-final Office action.
In addition, an Information Disclosure Statement (IDS) must be submitted with the PPH request, disclosing any prior art or other information that has been cited in any corresponding application, including but not limited to the earlier application.
Benefits:
Time and Cost Savings: If the PPH request is granted, the USPTO typically begins examination within 2 to 3 months – significantly faster than the usual 1-2 year wait. However, this timeline applies only once the application has completed all pre-examination processing, as the PPH program does not expedite those initial steps.
Disadvantages:
Once PPH, always PPH: A key disadvantage of the PPH process is that once a request has been granted, it cannot be reversed. Claims that are broader than those allowed in the earlier application can be pursued only in a continuation patent application.
Limited Amendments: Only narrowing amendments are permitted during the examination process. Additionally, applicants must include a statement confirming that the amendment does not exceed the claim scope of the earlier application. Failure to provide this statement may result in a notice of noncompliant amendment.
Conclusion:
In our experience, if an application meets the criteria and is satisfied with the scope of the earlier allowed claims, examination under the PPH program is an effective way to expedite patent examination in the US. However, while it offers faster processing and no fees, there are limitations, such as restrictions on amendments and the inability to reverse a request once granted.
Finally, many jurisdictions have PPH programs, including Israel. If you are interested in hearing how we handle US and Israel prosecution, both individually and in tandem, while taking advantage of PPH and other tools that can shorten pendency and make patent prosecution more affordable, please be in touch!
