Patent Prosecution Highway update

A number of Patent Prosecution Highway (PPH) programmes exist between national patent offices to allow patent applications to be granted more quickly, and potentially at lower cost to the applicant, once one of the cooperating patent offices has issued a positive opinion regarding patentability. One such programme is the PPH programme based on PCT work products that exists between the European Patent Office (EPO), the Japanese Patent Office (JPO) and the US Patent and Trade Mark Office (USPTO), which has recently been extended until 28 January 2014.

This programme enables an applicant whose PCT claims have been determined to be allowable to have a subsequent national phase application examined in an accelerated manner based on the positive findings. The positive findings may be in a written opinion of an International Searching Authority (ISA) or in an International preliminary examination report prepared by an International Preliminary Examination Authority (IPEA).

For example, where a PCT application contains claims that were found patentable by the EPO as ISA or IPEA, the applicant may request accelerated examination at the JPO or the USPTO once the PCT application has progressed to be a national phase application before these offices. Similarly, where a PCT application contains claims that are determined to be allowable by the USPTO or JPO as ISA or IPEA, the applicant may request participation in the PPH programme at the EPO when a European regional phase application is filed.

Also, a new PPH programme was recently announced between the Chinese Patent Office (SIPO) and the JPO. This is the first PPH programme that the SIPO has entered into and is indicative of the growing number of PPH programmes.

Accordingly, there are increasing opportunities for applicants to accelerate
progress of their patent applications for a given invention once one patent office has issued a positive opinion on that invention.