The Patent Prosecution Highway – Speeding up patent prosecution

How can the Patent Prosecution Highway help to accelerate grant of your patent applications?

The Patent Prosecution Highway (PPH) offers patent applicants in certain jurisdictions an opportunity to accelerate prosecution and achieve an earlier grant. If you are interested in accelerating grant of your patent applications, you should consider using the Patent Prosecution Highway.

What is the Patent Prosecution Highway?

The Patent Prosecution Highway is a system of bilateral agreements between various patent offices, which allows the accelerated prosecution of patent applications in these offices in certain circumstances. These circumstances differ depending upon the exact nature of each agreement, although there is a common theme to each PPH agreement.  The largest PPH agreement is the Global Patent Prosecution Highway (GPPH), a pilot program covering 27 patent offices around the world.

How does the Patent Prosecution Highway work?

If you are pursuing patent applications relating to a single invention in two or more territories that have a PPH agreement with each other, you can use positive examination reports in one of those jurisdictions as a basis to receive accelerated examination, and often accelerated grant in the second territory. For example, prosecution of a UK patent application can be accelerated by filing a PPH request based upon a granted US patent for the same subject matter.

General requirements to use the PPH arrangements

As the PPH is not a single agreement, but rather a network of individual agreements between offices, there is no one definite standard as to what is required to submit a valid PPH request to a patent office.

Each territory has its own specific method via which inclusion in the PPH program can be requested.

However, examples of the most common requirements for a valid PPH request include:

  • A positive examination report which includes an allowable claim, from a participating territory
  • A corresponding claim in the application in the second territory
  • Copies of all examination reports from the first territory (and often translations of these)

How to use the PPH in the UK

For a PPH request based upon patent applications in certain territories (such as the US), the UKIPO is able to retrieve the earlier examination reports (those relied upon to accelerate prosecution) itself, and so enables a more simplified process for requesting PPH.

In these cases, only the ‘Office of Earlier Examination’, the previous patent application number and a table setting out how the claims of the two applications match is required.

Where the UKIPO cannot retrieve the earlier documents, then these must be supplied with the PPH request (alongside any translations of the into English, if applicable).

There is no official fee required to file a PPH request.

Why use the PPH?

The PPH is primarily used to accelerate prosecution and grant of applications when a satisfactory claim scope is allowed in one territory, and the applicant has no desire to achieve broader claim set.

Pursuing a satisfactory claim set using the PPH can bring forward grant (and hence any potential enforcement) by several years. This allows applicants to gain enforceable rights without having to go through multiple rounds of examination across several territories; it can instead allow an applicant to quickly and directly pursue subject matter allowed in other states.

In an ideal scenario, the use of the PPH can save many thousands of pounds in potential prosecution costs, especially if its use enables grant of patent applications without needing to respond to examination reports.

Downsides to the PPH

As above, there is no singular PPH agreement binding all states (though the GPPH covers many states – those marked GPPH in the below list). Therefore, the PPH cannot always be used across an entire patent family, so prosecution in some territories will still be ‘in the slow lane’.

One key downside of the PPH is the fact that some costs associated with patent prosecution will be brought forward significantly, which is part of the trade-off between speed of prosecution and deferment of costs.

Additionally, using the PPH can bring forward refusal of an application by several years, as there is no guarantee that subject matter in one territory will also be patentable in another. In some cases, leaving an application ‘in the slow lane’ could defer refusal and any costs associated with responding for years. Delaying refusal may be useful for some patent families, for example to keep competitors guessing as to whether the applications in that family will be granted.

One lesser seen downside of the PPH is the need to file a positive examination report from another jurisdiction with the request. In many cases the first positive examination report is not issued for quite some time, and so acceleration of prosecution by other means may be more effective.

For example, some jurisdictions (such as the EPO) offer acceleration as of right (e.g. PACE request at the EPO), and others (such as the UKIPO) offer acceleration in certain circumstances, such as potential infringements being on the market. In many cases, these acceleration options are sought instead of PPH requests.

States with which the UK has a PPH arrangement

There are several states with which the UK has a PPH agreement, in particular, these are:

  • China;
  • Brazil;
  • Austria (GPPH);
  • Canada (GPPH);
  • Denmark (GPPH);
  • Germany (GPPH);
  • Estonia (GPPH);
  • Hungary (GPPH);
  • Israel (GPPH);
  • Chile (GPPH);
  • Peru (GPPH);
  • Portugal (GPPH);
  • Australia (GPPH);
  • New Zealand (GPPH);
  • Singapore (GPPH);
  • Iceland (GPPH);
  • Japan (GPPH);
  • South Korea (GPPH);
  • Norway (GPPH);
  • Nordic Patent Institute (GPPH);
  • Poland (GPPH);
  • Finland (GPPH);
  • Sweden (GPPH);
  • *Russia (GPPH);
  • Colombia (GPPH);
  • Spain (GPPH);
  • USA (GPPH); and
  • Visegrad Patent Institute (GPPH).

* As of 2022, whilst Russia remains a part of the GPPH, the USA, Canada, Japan and Germany will no longer accept PPH requests which are based upon Russian patent applications.

If you need any advice on the Patent Prosecution Highway, please contact us.

Wilson Gunn