The Patent Prosecution Highway (PPH) provides a mechanism for accelerating examination of a patent application at a second patent office, if examination work has already been conducted at a first patent office with whom a PPH agreement is in place. If claims of an application have been found acceptable by a first office (often the office of first filing), accelerated examination of a corresponding application at a second office may be requested. The PPH allows a second patent office to make use of relevant work already conducted by a first office when examining an application.

PPH agreements between UKIPO and other offices

The UK Intellectual Property Office (UKIPO) is a participant in the Global Patent Prosecution Highway (GPPH). The GPPH is a pilot programme between 27 different offices across the world and allows PPH to be used for applications that are filed at two or more of these offices.

Separate bilateral agreements exist between the UKIPO and the State Intellectual Property Office of the People’s Republic of China (SIPO), and the UKIPO and the Brazilian National Institute of Industrial Property (INPI-BR). Neither SIPO nor INPI-BR participate in the GPPH programme.

PPH agreements between EPO and other offices

The European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO), referred to as the IP5 Offices, are cooperating through a comprehensive Patent Prosecution Highway pilot programme.

The IP5 PPH pilot programme commenced in 2014 for an initial period of three years. This has been extended twice and the programme is now running until at least 2023, while its long term feasibility is assessed. The EPO does not participate in the GPPH.

PPH agreements also exist between the EPO and each of IPA (Australia), INPI (Brazil), CIPO (Canada), SIC (Colombia), Eurasian Patent Office (EAPO), ILPO (Israel), MyIPO (Malaysia), IMPI (Mexico), INDECOPI (Peru), IPOPHL (the Philippines), ROSPATENT (Russia) and IPOS (Singapore).

Requirements for requesting PPH

• There must be a PPH agreement in place between the second patent office where PPH is being requested and the first patent office where examination work has already been conducted.
• The patent applications at the first and second patent offices must be corresponding and must have at least the same priority/filing dates (these criteria are stricter for some patent offices, e.g. the order of filing of patent applications and the countries from which the applications initially claim priority may be relevant).
• At least one claim must have been accepted by the first patent office where examination work has already been conducted.
• All claims on file at the second patent office where PPH is being requested must sufficiently correspond to one or more of the claims indicated as accepted by the first patent office.
• Examination at the second patent office where PPH is being requested should not have begun.

Advantages of the PPH

Using the PPH has many advantages for patent applicants. The accelerated examination reduces the time for prosecution and also reduces costs. In some offices, the period of time until a first examination report is received has been reduced from over two years to approximately three months. Further, at some offices, PPH applications can have a grant rate of 95% with more than 20% of PPH applications proceeding to grant with only one examination report being received.

Thus, requesting PPH at a second patent office based on claims accepted at a first patent office should reduce the number of examination reports received and therefore reduce the prosecution costs for those applications.