What are Patent Prosecution Highway (PPH) programmes – and should you be using them?
PPH programmes can help patent applicants to accelerate the grant of a patent application in a second patent office. Emmanuelle Laude-Duval explains the opportunities and benefits of the system.
PPH programmes are collaborative arrangements between two (bilateral) or more (multilateral) patent offices. Their objective is to accelerate the granting of a patent application filed in an office of second filing (or second application) under priority of a patent application or patent filed in an office of first filing (or first application).
In practice, the holder of both applications must file a request for acceleration under the PPH in the office of the second application, provided of course that:
- 1. that office is a partner office with which the office of first filing has signed a PPH agreement;
- 2. the request for acceleration under the PPH is filed with the office of second filing before examination3 starts (the request may be filed at the time of filing the second application or after, so long as it’s before examination begins); and
- 3. the request for acceleration under the PPH is made on the basis of claims that ‘sufficiently’ correspond to those considered patentable/eligible by the partner Office of first filing.
Claims are considered to ‘sufficiently’ correspond when the claims of the application filed with the office of second filing are similar in scope or narrower than those considered patentable by the office of first filing.
Key benefits of PPH programmes
PPH programmes simplify and accelerate the patent grant procedure before the office of second filing, while limiting the costs of the examination procedure. Participation is free of charge at the EPO PPH and French PPH programmes, for example, with the exception of the usual procedural fees.
PPH programmes also harmonise, as far as possible, the scope of the corresponding claims before both offices. As the conditions of patentability are not always identical from one country to another, harmonisation will not always be easy. This applies particularly in the context of a PPH between a European or French patent application and a US patent application, for example.
Opportunities for applicants
There is a range of PPH programmes available to applicants in the EU. For example, the European Patent Office (EPO) has PPH programmes with JPO (Japan), KIPO (South Korea), CNIPA (China), USPTO (USA), but also ILPO (Israel), CIPO (Canada), IMPI (Mexico), IPOS (Singapore), IPA (Australia), SIC (Colombia), ROSPATENT (Russian Federation), MyIPO (Malaysia), IPOPHL (Philippines), OEAB (Eurasian Patent Office), INPI (Brazil) and INDECOPI (Peru).
Individual European countries also have their own separate programmes. For example, in France, an applicant holding a first French patent application with at least one claim considered as patentable (or a French patent) can request the acceleration of the granting procedure of a second patent claiming its priority in one of the following three partner patent offices of the INPI:
- Japan (since 1 January 2021) ;
- United States (since 1 December 1 2021); and
- Canada (since 1 February 2021).
French applicants with a French patent application and a European patent application, each including at least one claim considered as patentable, would have two possibilities to request the acceleration of the granting procedure, therefore, in Japan, in the US and in Canada if they wish to file a patent application in one of these three countries.
For the other countries (South Korea, China, Israel, Mexico, Singapore, Australia, Colombia, the Russian Federation, the Philippines, the Eurasian Patent Office, Brazil and Peru), they would have to rely on the European title.
Not all PPH programmes are created equal
For Japan, the United States and Canada, it would a priori be more relevant to submit a PPH request on the basis of the title whose claims considered patentable have the broadest scope. However, the decision on which PPH to use, if any, will depend on the expectations of the applicant, the country considered and the technical field of the invention. A case-by-case analysis is strongly recommended, therefore.
For more information or specific guidance on patent applications and PPH programmes, speak to your Novagraaf attorney or contact us below.