Patent Prosecution Highway Great at the USPTO. Early days for the EPO

On 29 September 2008 the EPO launched its “Patent Prosecution Highway” pilot program to facilitate accelerated examination of European patent applications by making use of results of examination in the US Patent and Trademark Office. The pilot will run for one year and will explore the extent to which the two offices are duplicating each other’s work. Similar bilateral arrangements are in place between the Japanese, US and UK patent offices which have all extended their pilot programs to encompass ex-PCT applications.

What it means – Jumping the Queue

The PPH is a mechanism for accelerated examination where a patent application is first filed in one office (the office of first filing or OFF) and is later filed in another office with a priority claim (the office of second filing or OSF). If examination has not yet begun before the OSF, and a corresponding patent has issued (or is about to issue) through the OFF, the applicant may amend the claims of the application in the OSF to conform to claims allowed in the OFF. By doing this and requesting that the application before the OSF be treated in the PPH pilot, it will be moved to the top of the examination queue and examined out of turn.

That is all. There can be no expectation that the application will be treated more favourably by the OSF just because the claims are allowed by the OFF.

It may in practice be treated more favourably, depending on how thoroughly the OSF believes the OFF has conducted its examination. Indeed, feedback so far shows very positive results in the USPTO as OSF. The overall allowance rate is almost double that of regular cases without PPH request.

Our experience before the UKIPO is that requesting examination within the PPH will bring the application to the top of the queue, and examination will be prompt, but the UKIPO is quite ready to conduct its own search and raise new objections, even in spite of allowance by the JPO, an office that is usually considered as setting a high standard.