Manage Your Patent Resources Part 1: The Patent Prosecution Highway is Open

[Sandra Thompson, PhD]

The Patent Prosecution Highway (“PPH”) is under development by the United States Patent & Trademark Office (USPTO), along with several foreign patent offices, to combine resources and expedite allowance for willing and knowledgeable patent applicants. The PPH may be an ideal and cost-effective route to expedite allowance of qualifying applications, instead of utilizing the more-costly accelerated examination process.

The PPH is open between the US and Korea – traveling both ways – for qualifying patent applications. According to the USPTO:

“…an applicant receiving a ruling from either the Korean Intellectual Property Office (KIPO) or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. The Patent Prosecution Highway will leverage fast-track patent examination procedures already available in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently…By basing the prosecution in the second office on patentable results from the first office, applicants can expect to obtain patents in both offices faster.”

Additional PPHs are being beta-tested between the US and Europe, Japan, China, Australia, Denmark, Singapore and Germany with each of these slated to permanently open later in 2009 or early in 2010.

The process generally involves getting at least one claim allowed in one of the PPH countries. If the allowed claims are then submitted to the other PPH country before substantive examination begins, then that country may expedite allowance. The process requires filing a petition, an information disclosure statement, a claim chart and certified translations of a portion of the prosecution history to the PPH country of interest. All documents must be submitted electronically. If the petition is granted, the application is taken out of line and examination is expedited. USPTO fees are about $130 for the petition.

Continuation applications are not automatically brought on to the PPH, but instead, the applicant must submit a petition for each one, if they qualify.

It is important to note that clients should monitor their patent portfolio in order to determine if the PPH is the right fit for the pending applications. If so, contact me as soon as possible to discuss, because once substantive examination begins on the second application, applicants may no longer take advantage of this program.

Please contact Dr. Sandra Thompson at [e-mail] or 949-224-6282 to discuss.