Introduction to Patent Prosecution Highways (PPH) October ... Prosecution Highway... · 21 “Claim Correspondence ... – PPH can save time and costs in foreign applications based

Presented by:

Matthew Wernli – Austin ([email protected])

Christopher Bowley – New York ([email protected])

Introduction to Patent Prosecution Highways

(PPH)

October 12, 2011 Webinar

Topics for Discussion

Basics and Mechanics

Worldwide Network

Benefits

Procedural Issues to Consider

Litigation Issues to Consider

Ways to Best Leverage PPH to Expedite Application(s)

Future Developments of PPH

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Worldwide Network

Benefits





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What is PPH?

A work sharing program

– Lets examiners leverage the search and examination results from

other patent offices

– BUT, examiners are still required to conduct their own search and

examination

Expedites examination

– Makes application special

– Application examined out-of-turn

Based on agreements with other national/regional patent

offices

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Three Types of Patent Prosecution Highways

Paris Convention

– Uses national work product from a qualifying office • Search, opinion, allowance

– Work product from office of first filing (OFF) may be used in office of second filing (OSF) to expedite examination in the OSF

PCT PPH

– Uses international stage work product • Search/written opinion, IPRP

– Work product may be used in prior or later filed national application as well as the national stage applications

Mottainai

– Similar to Paris Convention PPH but uses an “Office of Earlier Examination (OEE)” and “Office of Later Examination (OLE)” framework

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Mechanics of PPH

Four requirements to request entry into PPH at the

USPTO – The U.S. application must have a specified relationship with

foreign application (national or PCT);

– At least one claim in the foreign application must be indicated as

patentable by work product from the foreign patent office;

– All of the claims in the U.S. application must “sufficiently

correspond” to the patentable claims in the foreign application;

and

– Substantive examination for the U.S. application cannot have

already started.

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Mechanics of PPH

All the requirements are met…now what?

– (1) Submit a request to enter PPH by EFS to the USPTO with

Form PTO/SB/20

– (2) Submit copies of all relied-upon work product indicating the

patentable subject matter (e.g., office actions, WO/ISA, WO/IPRP,

WO/IPEA, EESR)

– (3) Submit an IDS including the documents in (2) and cited

references (include certified translations if necessary)

– (4) Show claim “correspondence” in the request form of (1) or a

separate table

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Mechanics of PPH



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Worldwide PPH Agreements

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USPTO PPH Agreements

Paris Convention

Australia, Austria, Canada, Denmark, Europe, Finland, Germany,

Hungary, Japan, Korea, Russia, Singapore, Spain, UK, Singapore,

Mexico, Israel, Taiwan

PCT

Japan, Korea, Australia, Europe, Finland, Russia, Austria, Spain,

Sweden, Norway

Mottainai

Japan, UK, Canada, Australia, Finland, Russia, Spain

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Useful Information

Dedicated USPTO PPH web page

(http://www.uspto.gov/patents/init_events/pph/index.jsp)

including links to:

– FAQs and forms

– PPH “how-to” and informational video

– Downloadable information brochure

– Question and feedback e-mail inbox

PPH information portal site with statistics and other

information from all participating offices

(http://www.jpo.go.jp/cgi/linke.cgi?url=/ppph-

portal/index.htm)



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Benefits of Patent Prosecution Highways

Expedited Examination

– On average, it takes about 119 days from grant of a PPH

request to mailing of First Action (as of 8/31/2011)

– On average, it takes about 66 days from grant of a PCT PPH

request to mailing of First Action (as of 8/31/2011)

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Greater Efficiency – About 26% of applications granted entry into the PPH receive

first action allowances

• About 65% of applications granted entry into the PPH

receive first action rejections (of these, almost 86% are

prior art rejections)

– About 20% of applications granted entry into the PCT PPH

receive first action allowances

• About 63% of applications granted entry into the PPH

receive first action rejections (of these, almost 90% are

prior art rejections)

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Allowance rates (cumulative July 2006 – June

2011) – Paris PPH – 88%

– PCT PPH – 94%

– Non PPH – 47% (including RCEs)

Actions per disposal (cumulative July 2006 –

June 2011) – Paris PPH – 2.13

– PCT PPH – 1.61

– Non PPH – 2.49 16


Decreased Costs of Prosecution – Based on AIPLA Report of the Economic Survey, the USPTO

publishes an average cost per action of about $2100

– Based on the decreased number of actions:

• PCT PPH saves about $1800 per case

• Paris PPH saves about $700 per case

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Reduced Pendency – PPH enables applications filed in multiple jurisdictions to be

fast tracked based on another Office's work product.

– Faster portfolio building

Simple, Inexpensive Petition – The USPTO eliminated the petition fee in May 2010

Reduced File History

– Fewer office actions to respond to

– Smaller file history compared with other Accelerated

Examination programs

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USPTO’s Goal for PPH

“We set out on a path to double our PPH entries three years

in a row, year over year….My sales pitch to you is use PPH

if you’ve got cases that are filed in the USPTO and any other

country…with which we have PPH bilateral agreements. It

will save your client a tremendous amount of money….”

USPTO Director David Kappos

speaking at Fish & Richardson on Jan. 6, 2011

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“Claim Correspondence”

Rule - All claims on file, as originally filed or as amended, for examination under the PPH must “sufficiently correspond” to one or more of those claims indicated as patentable by the OFF/ISA

Claim correspondence must be maintained through prosecution

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“Claim Correspondence”

Claims are considered to "sufficiently correspond" where, accounting for differences due to translations and claim format,

– Paris Convention PPH (except Japan)

• the claims in the OSF are of the same or similar scope as the claims in the OFF

– PCT PPH & Japan

• the claims in the OSF are of the same or similar scope as the claims in the OFF/ISA, or the claims in the OSF are narrower in scope than the claims in the OFF/ISA

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“Sufficiently Correspond”

“accounting for differences due to translations and claim format”

– U.S. examiners should allow a claim to be presented in the U.S. application that does not match word-for-word with the previously examined claim

– The applicant may present claims in “U.S.” style even if the examined claims were not, provided the scope of the presented claims meets the rule

– Ex. Claims drafted in “Jepson” style in Europe may be presented in U.S. style and still maintain “sufficient correspondence”

– Ex. Multiple dependent claims that were previously examined do not need to be in multiple dependent form in the U.S.

How? File a preliminary amendment with your request

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“Sufficiently Correspond” – Points to Remember

Present claims that are closest to the exact language of the previously examined claims

Including a new claims correspondence table when filing an amendment

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“Sufficiently Correspond” – Points to Remember

Examiners have some discretion to allow amendments that do not, strictly, maintain claim correspondence

– But, if claim correspondence cannot be maintained, a continuation must be filed and the application is no longer in the PPH.

Mine the specification for subject matter to add as dependent claims to independent claims that sufficiently correspond to claims indicated as patentable by the ISA when filing a PCT PPH request

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Statements Made in Claims Correspondence Table – Possible opportunity for IC

Claim Scope – Claims filed in some foreign patent offices may originally be

narrower as compared to those filed in the U.S.

Not Litigation Tested in the U.S. – Courts have not had the opportunity to address patents issued

through the PPH

– Impact of foreign prosecution history to construe claims in U.S.

patents

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Ways to Best Leverage PPH to Expedite

Application(s) Two Strategies:

– Maintain current filing strategy and look for applications in which PPH

may be used

– Develop a filing strategy that takes advantage of PPH

U.S. “first filing” model

– PPH not available for first-filed U.S. application unless: (1) foreign

filing is through PCT, or (2) Mottainai can be used

– PPH can save time and costs in foreign applications based on U.S.

patentable claims

PPH model

– Location of first-filed application may rest on how best to expedite all

applications through PPH

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Ways to Best Leverage PPH to Expedite

Application(s)

Where to file first - considerations – Where is coverage sought?

– PCT application is typically filed?

– Typical pendency times to first action

• USPTO is about 31 month for communications

• EPO is about 6 months if original case

– Timeliness of search/exam authorities?

– Quality of search/exam authorities?

– Subject matter searched?

– Leverage USPTO web of PPH agreements?

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PCT PPH Search/Exam Authorities

USPTO

– Business methods

– Different searcher than US Examiner (outsourced)

EPO

– High quality search/opinion

– Can expedite EP prosecution

– No business methods

KPO

– Inexpensive for additional inventions

– Lower quality search

Russia

– New

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USApplication

PCTApplication

ALLOWANCE

ISR / WO(EPO)

DEMANDIPRP(EPO)

National Stage

USApplication

TRACK 1

PCT DEMAND IPRPNational

StageISR / WO

PPH PPH

PPH

PPH

I. U S F I R S T F I L I N G M O D E L

Use unless unable to obtain a needed Foreign Filing License (e.g. France and China) won’t work for all CA inventors

0 (Start) 1 Day 3 – 9 Months 12 – 16 Months 18 – 28 Months 30 – 31 Months

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PCTApplication

ISR / WO(EPO only)

DEMAND

US Application

IPRP(EPO only)

NationalStage

PPH PPH PPH

II. P C T F I R S T F I L I N G M O D E L

Use when filing first in China or France.

0 (Start)When FFLObtained

3 – 9 Months 12 – 16 Months 18 – 28 Months 30 – 31 Months

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EPOApplication

PCT ISR / WO DEMAND

Search /Opinion

IPRPNational

Stage

ALLOWANCE Validation

USApplication

PPH PPH

PPH

III. E P O F I R S T F I L I N G M O D E L

Use when all CA Inventors. Can also use for time critical cases (unless/until Track 1).

0 (Start) 1 Day 5 – 9 Months 12 – 16 Months 22 Months 28 Months30 – 31 Months



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USPTO Action Plan to enhance PPH:

– 400/month for FY 2012 - ?

– Conduct PPH awareness campaigns, internationally and domestically

Evolution of PPH – “PPH 2.0”

– Common framework to replace bilateral arrangements

– Expanded eligibility (MOTTAINAI model)

– Streamlines the PPH to make it more user-friendly, but not at the expense of work sharing benefits

Elimination of requirement to provide certified translation of prior art

Additional patent offices joining, e.g., China

Matthew Wernli – Austin ([email protected])

Christopher Bowley – New York ([email protected])

Thank You!

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Documents

Introduction to Patent Prosecution Highways (PPH) October ... Prosecution Highway... · 21 “Claim Correspondence ... – PPH can save time and costs in foreign applications based