Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, recently sent in this article he wrote with colleague’s Drew Schulte and Jia Li discussing the Patent Prosecution Highway and the value that can be achieved for those practitioners willing to explore the new program.
In July of 2006, the United States Patent and Trademark Office (USPTO) established a trial program with the Japanese Patent Office, where an applicant with an allowed claim in one office could fast track the examination of a corresponding application filed in the other patent office. This program paved the way for what would become known as the Patent Prosecution Highway (PPH).[1] Today, the PPH includes patent offices in many of the world’s largest economies and is growing.[2] Despite the USPTO’s estimate of a 94% overall allowance rate for PPH applications as compared to 44% for non-PPH cases when the United States is the Office of Second Filing,[3] practitioners have continued to be wary of using the new program, especially when it comes to leveraging entire patent portfolios.[4]
In part, the hesitation to embrace the PPH reflects a legitimate fear of comparatively untested methods when it comes to patent prosecution. Although patent practitioners deal every day with cutting-edge technology, which innovates constantly, they are often reluctant to try new approaches as patent prosecution is fraught with dangerous liability.[5] However, for those practitioners willing to explore this new avenue, the PPH offers potentially great rewards in terms of easier and faster prosecutions which can provide value-added leverage for a client’s patent portfolios.
The PPH is a set of bilateral agreements between patent offices aimed at reducing examination of duplicate applications, which constitute roughly a quarter of all applications,[6] in patent examination. After an applicant has had at least one claim found patentable in an Office of First Filing (“OFF”), the Applicant can request fast track examination in the Office of Second Filing (“OSF”).[7] Typically, the fast track examination is granted if (1) the claims are commensurate in scope; (2) the second application corresponds to the first application (i.e. has corresponding priority); and (3) the examination of the second application has not yet begun.[8]
As stated by the USPTO, the PPH provides a useful tool to expedite prosecution, decrease costs, and speed patentability determinations.[9] The PPH may be especially helpful for rapidly evolving technologies such as those in the telecom and electronics industries, which constituted roughly three-fourths[10] of all PPH applications received by the USPTO in 2010. [11] For example, Microsoft and IBM, the top user among companies entering Japan from the United States,[12] reported 73% and 87% allowance rates, respectively, for PPH cases as well as typically receiving a first office action in under two months.[13]
In a PPH application, the examiner will have the file history and prior art searches forwarded to them for review. Because the laws governing the various patent offices differ, the second office cannot and does not simply “rubber stamp” the application.[14] However, the second office examiner will have the benefit of reviewing the first office’s determination of patentability when assessing whether to grant allowance of the claim. While the more limited review may decrease cost and expedite patentability determinations, it also has its drawbacks. The claims of the second application cannot exceed the scope of those allowed by the first. Therefore, if the first office required narrower claims, the second office’s claims will need to be narrowed before examination even begins, with no guarantee that further narrowing will not be required.[15] Consequently, a less than ideal examination in the first office could affect the scope of allowable subject matter for the patent portfolio downstream. Additionally, given that the application of attorney-client privilege to prosecution of patent applications outside the United States is highly case specific, one must be mindful of these issues when pursuing a PPH application strategy, especially if litigation is either imminent or on-going.[16]
As its name suggests, perhaps the greatest asset of the PPH is the increase in speed. For technologies having, only a limited window for marketability, this speed can afford a significant advantage allowing one not only to recoup development costs, but also make money. Furthermore, due to the backlog of 700,000 applications now awaiting review[17] in the USPTO, applicants using the United States as the second office can receive the additional benefit of jumping to the front of the queue.
The PPH also offers the possibility of leveraging continuation practice in the United States by filing a narrower application off the parent application. A successful prosecution with the narrower continuation in the United States could then be used in the PPH. Given the variation in the legal standards in, for example, obviousness standards worldwide, it may be possible to juggle varying legal standards to secure protection for an invention in multiple jurisdictions quickly.[18] In this regards, the liberal use of continuations in the United States with multiple applications having claims of varying scope must be weighed carefully when venturing abroad, especially given the recent changes severely restricting divisional practice in Europe[19].
A second avenue to broaden the scope of protection, while still gaining the advantages of the PPH, is to use a foreign jurisdiction with a faster prosecution time as the first office. For example, unlike the United States and Japan, South Korea currently does not have a backlog of patents awaiting examination[20] and can make patent determinations within ten months.[21] After receiving an allowed claim, a second application can then be fast tracked in the United States receiving a first office action within two months.[22] While the second application is fast tracked, a more broadly claimed continuation can be prosecuted as normal to capture the full scope of the invention.[23]
These approaches demonstrate the value that can be achieved for those willing to embark down the PPH. With careful planning, strategies using the PPH can create robust portfolios in less time than typically associated with traditional prosecution. Moreover, quicker prosecutions have the added benefit of reducing effort for the practitioner and, more importantly, cost for the client. As more patent offices familiarize themselves with one another and additional patent offices are added to the program, the PPH will likely gain momentum. Notwithstanding the complexities and risks, a careful consideration of the PPH is well worth the effort when embarking on an international patent strategy.
[1] USPTO, Press Release, Patent Prosecution Highway Pilot Program between the USPTO and JPO (July 3, 2006) available at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf.
[2] USPTO, PPH Brochure, available at http://www.uspto.gov/patents/init_events/pph/pphbrochure.pdf .
[3] Charles Eloshway, USPTO, Office of External Affiars, Patent Prosecution Highway: Views from the USPTO, May 19, 2010 available at http://www.jpo.go.jp/torikumi/t_torikumi/pdf/highway_userseminar/uspto_happyo.pdf.
[4] Nick Godici, Birch, Stewart, Kolasch & Birch LLP, Executive Advisor, The Patent Prosecution Highway available at http://www.bskb.com/docs/PP-Highway-NG-32310.pdf (citing as of Nov. 11, 2009, the USPTO has received only 2,164 PPH requests).
[5] The National Law Journal, Patent Malpractice Claims Hit Firms, (Dec. 10, 2007) available at http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=900005498113&slreturn=1&hbxlogin=1.
[6] Mark Guetlich, Patent Prosecution Highway-Strategic Considerations and Usefulness, Intellectual Property Owners Committee CLE Conference –Chicago Hilton, (Sept. 16, 2009), available at http://www.ipo.org/AM/Template.cfm?Section=Home&Template=/CM/ContentDisplay.cfm&ContentID=23818.
[7] http://www.uspto.gov/patents/init_events/pph/index.jsp.
[8] Canadian Intellectual Property, Requirements and Procedures to File a Request to CIPO for the Patent Prosecution Highway Pilot Program Between CIPO and the KIPO, available at http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02059.html#requirements (last visited Feb. 9, 2011); USPTO, Patent Prosecution Highway (PPH) Frequently Asked Questions (FAQs), available at http://www.uspto.gov/patents/init_events/pph/pph_faqs.pdf.
[9] USPTO, PPH Brochure, available at http://www.uspto.gov/patents/init_events/pph/pphbrochure.pdf.
[10] John Carson et al., A practical guide to the patent prosecution highway, Managing Intellectual Property (April 1, 2009), available at http://www.managingip.com/Article/2167622/A-practical-guide-to-the-patent-prosecution-highway.html.
[11] Bruce Kisliuk, Assistant Deputy Commissioner for Patent Operations, Chemical Disciplines & Designs, USPTO, Overview of USPTO Work-Sharing, December 8, 2010 available at http://www.cabic.com/bcp/120810/BKisliuk_PPHW.ppt#356,1,Overview of USPTO Work-Sharing.
[12] Yutaka Niidome, Deputy Director, Japan Patent Office, PPH from the JPO Point of View, AIPLA PPH Users Meeting (May 19, 2010).
[13] AIPLA Reports, A Periodic Notification of AIPLA Activities and Current Developments in Intellectual Property Law (May 20, 2010) available at http://www.aipla.org/resources/reports/Pages/May-20,-2010.aspx.
[14] Law Blog Original Articles on the Law, Interpretation of Obviousness, (Jan. 19, 2010) available at http://lawyers-law.com/interpretation-of-obviousness/.
[15] Mark Guetlich, Patent Prosecution Highway-Strategic Considerations and Usefulness, Intellectual Property Owners Committee CLE Conference –Chicago Hilton, (Sept. 16, 2009), available at http://www.ipo.org/AM/Template.cfm?Section=Home&Template=/CM/ContentDisplay.cfm&ContentID=23818.
[16] Robert A. McFarlane, The Effect of International Comity on the Application of the Attorney-Client Privilege and Foreign Privilege Laws in U.S. Patent Litigation – www.chtlj.org/sites/default/files/media/articles/…/v023.i4.McFarlane.pdf
[17] Phil Hirschkorn et al., Patent Backlog Frustrates Inventors, CBS Evening News (Aug. 8, 2010) available at http://www.cbsnews.com/stories/2010/08/08/eveningnews/main6755116.shtml.
[18] See Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 (stating the obviousness standard for Australia); Apotex Inc. v. Sanofi-Synthelabo Canada Inc. (2008), 69 C.P.R. (4th) 251 (S.C.C.) (PLAVIX) (Canadian case adopting the obviousness test of Pozzoli SPA v. BDMO SA, [2007] F.S.R. 37, [2007] EWCA Civ 588); and Supreme Court Ruling of 2005 HU 3284 (Sept. 06, 2007) (stating the obviousness standard for South Korea).
[19] www.mewburn.com/…/New_Rules_at_EPO_-_Divisional_applications_-_April_2009.pdf.
[20] European Patent Office, Patents around the world, available at http://www.epo.org/topics/patent-system/patents-around-the-world.html.
[21] Peter Oliver Interview with Jung-Sik Koh, KIPO Commissioner (Nov. 1, 2009) available at http://www.managingip.com/Article/2041474/The-fastest-patent-office-in-the-world.html.
[22] Yutaka Niidome, Deputy Director, Japan Patent Office, PPH from the JPO Point of View, AIPLA PPH Users Meeting (May 19, 2010).
[23] See John Carson et al., A practical guide to the patent prosecution highway, Managing Intellectual Property (April 1, 2009), available at http://www.managingip.com/Article/2167622/A-practical-guide-to-the-patent-prosecution-highway.html.
Tags: fast track examination, Japanese Patent Office, patent examination, patent offices, Patent Prosecution, Patent Prosecution Highway, PPH, USPTO
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