The Patent Prosecution Highway (PPH) is an effort aimed to expedite patent prosecution by sharing information among patent offices.[i] It also allows each participating patent office to benefit from earlier work completed by the other to lower examination workload and boost patent quality.

Participating patent offices have agreed that if an applicant receives a ruling from a first patent office that at least one claim is admissible, the applicant may request fast track examination of the corresponding claim(s) in a corresponding patent application pending in a second patent office.[ii] PPH uses fast-track examination methods among cooperating patent offices to allow applicants to attain the final disposition of a patent application more rapidly and efficiently than regular examination processing.

Functions of PPH

On the basis of bilateral office agreements, the PPH allows an application whose claims have been judged to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon request from an applicant.

The PPH’s goal is to make it easier for an applicant to obtain a patent at an early stage around the world, as well as to improve the sharing of search and examination results between IP Offices in order to minimise the burden of examination and improve the quality of examination globally.[iii]

PPH Between the Indian Patent Office (IPO) & Japan Patent Office (JPO)

The Government of India approved the Indian Patent Office’s (IPO) petition to establish the Patent Prosecution Highway (PPH) programmes with cooperating patent offices from other nations on November 20, 2019.

As a result, on November 21, 2019, the first PPH pilot programme between the Japan Patent Office (JPO) and the Indian Patent Office (IPO) began for a period of three years. With this arrangement, expedited prosecution under PPH was permitted in India based on an approved/granted comparable Japanese application; or vice versa, expedited prosecution under PPH was permitted in Japan based on an approved/granted corresponding India application.

JPO and IPO began receiving PPH requests under this experimental scheme as of December 5, 2019. The number of PPH requests are limited to 100 per year for each office. A single applicant or a combined applicant would be limited to submitting no more than 10 PPH requests each year. Since the inception of the PPH programme, the IPO has received 100 requests, with 56 of them being accepted.

General Guidelines for IPO-JPO

The processes that applicants must follow in order to request accelerated examination through the Patent Prosecution Highway (PPH) pilot programme between the Indian Patent Office (IPO) and the Japan Patent Office are outlined in these procedure guidelines (JPO). The PPH-MOTTAINAI and the Normal PPH are both covered by the guidelines.

Under the PPH pilot programme between the IPO and the JPO, applicants can request expedited examination by following a prescribed procedure that includes the submission of relevant documents on an application that is filed with the Office of Later Examination (OLE) and meets the requirements described in these guidelines based on an application that is determined to be patentable by the Office of Earlier Examination (OEE).

An applicant must provide information to the OLE in the required Form given in Chapter 5 of these guidelines when submitting a request for the PPH pilot programme.

In accordance with the rules of the Joint Statement of Intent (JSoI) (Annex2), the offices may discontinue the PPH pilot programme early and notify the public via the offices’ official website.

Benefits of PPH

Filing patent applications under PPH can significantly shorten the time to prosecute patent applications. According to figures given by the China National Intellectual Property Administration (CNIPA), the average time to prosecute patent applications filed under PPH is around 11.9 months, from initial filing to getting a final decision (e.g., allowance or abandonment). Non-PPH patent applications, on the other hand, take an average of 22.7 months to prosecute. Furthermore, according to statistics, applicants can anticipate obtaining an initial office action in just 2.7 months after filing PPH patent applications, compared to 12.5 months for non-PPH patent applications. Furthermore, filing patent applications under PPH may save applicants money because PPH patent applications require only one office action before issuance. Finally, an average allowance rate for PPH patent applications is around 87.8 percent, whereas an average allowance rate for non-PPH patent applications is roughly 76.1 percent.

Patent applications filed under PPH with the US Patent and Trademark Office (USPTO) enjoy similar privileges. For example, in the United States, applicants can anticipate to obtain an initial office action from the USPTO within two months of filing. In contrast, it takes around a year or more for non-PPH patent applications to receive an initial office action from the USPTO. As is obvious, submitting patent applications under PPH has numerous advantages. As a result, applicants are recommended to explore if patent applications can be filed under PPH in countries of interest when considering filing patents worldwide.

Examination Procedure Followed under PPH

Common Procedure

When the OLE receives a request with the above-mentioned materials, it determines whether the application is eligible for expedited examination under the PPH. When the OLE approves the request, the application is launched. The PPH has given you special status for an expedited examination.

The procedure under the Indian Patent Office

If the request does not match all the aforementioned criteria, the applicant will be notified of the deficiencies. The applicant has 30 days to correct the errors by supplying the required papers. The IPO will review the applicant’s documentation and determine whether or not the faults have been remedied. If the deficiencies are remedied, the application will be given a special status for an accelerated examination under the PPH. If the defects are not remedied, the IPO will notify the applicant that a special status for accelerated inspection under the PPH will not be granted. The applicant cannot request the PPH again after receiving news that a special status for an accelerated examination under the PPH will not be assigned.

The procedure under the Japan Patent Office

If the request does not match all of the above criteria, the applicant will be contacted, and the request’s flaws will be addressed. The applicant will be given the option to provide missing documents before the notification of not assigning a special status for expedited examination under the PPH is sent.

Even after receiving information that a special status for an accelerated examination under the PPH will not be assigned, the applicant might request the PPH in a new request for participation.

Information for Participation in the PPH

The following forms are a guide for the application for participation in the Patent Prosecution Highway’s Pilot Programme.

Indian Patent Office

Indian Patent Office

IPO

Japan Patent Office

Japan Patent Office

Japan Patent Office

Conclusion: PPH programmes provide considerable benefits, such as a faster patent grant, high allowance rates, and the possibility of large cost savings.[iv] In the author’s opinion, the Patent Prosecution Highway is an excellent procedure which not only expedites the Patent Procedure but also provides the applicant with a platform. It also promotes integration and collaboration between countries such as India and Japan aforementioned case.

In addition to that, PPH further promotes Intellectual Property, which not only enables but also enriches the true national asset, i.e. Intellectual Property.  

References: 

[i] www.wipo.net [World Intellectual Property Organization]

[ii] Carson, J. M., Kessler, A., & Dunlop, H. (2009). A Practical Guide to the Patent Prosecution Highway. No. 188 Managing Intell. Prop., 24.

[iii] Hunter, D. (2015). Commentary: Patent prosecution highway—fast track examination of applications. Technology & Innovation17(1-2), 37-39.

[iv] Potts, C. (2011). The Patent Prosecution Highway: A Global Superhighway to Changing Validity Standards. Available at SSRN 1959587.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

  • Title

    Khushi Saxena is a BALLB (Hons.) student at Symbiosis Law School, Pune. Alongside being a legal writer for over three years, she has a profound interest in Intellectual Property Laws & International Relations.