The Patent Prosecution Highway

The patent prosecution highway (PPH) is a set of initiatives for providing accelerated patent prosecution procedures by sharing information between offices that have entered into an agreement under the PPH. At present, there are a variety of PPH bi-lateral agreements existing between many pairs of intellectual property offices worldwide.

An example of such a bi-lateral agreement is the PPH agreement between the United States Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) where an applicant who receives a ruling from either office that at least one claim in an application is allowable may request that the other office fast track the examination of claims of similar scope in the corresponding application.

Global Patent Prosecution Highway

A pilot for a Global Patent Prosecution Highway (G-PPH) was launched on Friday 10 January 2014 with an agreement between 17 intellectual property offices. The pilot G-PPH works on the same basis as the existing bi-lateral agreements but rather than accelerating prosecution of a corresponding pending application in just one office allows applicants who have had a set of claims found allowable by one participating office to ask that co-pending applications in as many as 16 other participating offices be accelerated.

The 17 offices that are within the agreement include the patent offices of Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, South Korea, Norway, Portugal, Russia, Spain, Sweden, United Kingdom and the USA. The other office is the Nordic Patent Institute (NPI) which acts as an international searching authority (ISA) and international preliminary examining authority (IPEA) for PCT applications filed at the patent offices of Denmark, Iceland, Norway and Sweden.

Comment

The pilot G-PPH is aimed at cutting the time and cost of seeking patent protection in key global markets.

The pilot G-PPH means that if, say, a set of claims is found allowable on a Canadian patent application by the Canadian patent office, that can be used to accelerate prosecution of a corresponding patent application in Norway as both the Canadian patent office and the Norwegian patent office are part of the pilot G-PPH.

Very often, territories in which patent protection is sought are chosen on a cost basis based on, for example, the activities of competitors. Other territories may be discounted as the patent protection that may be on offer in those territories does not justify the cost that would be necessary to secure protection in those territories as well. The G-PPH, offering accelerated prosecution provided set of claims is found to be allowable in a first territory party to the G-PPH, can reduce the cost of pursuing patent protection in the sixteen other territories by hopefully reducing duplication of the work involved and also reduce the time taken to pursue patent protection in the other territories.

Dr Julian M Potter and Alistair McKinnon, WP Thompson

 

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