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The Patent Prosecution Highway: Strategic Considerations in
Accelerating U.S. and Foreign Patent Prosecution
ACC Quick HitsJune 13, 2012
Dr. John K. McDonaldDr. Michael Schiff
Kilpatrick Townsend & [email protected]
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Question: Have you faced these situations?
Your Experience
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Why Accelerate Prosecution?
Reasons to accelerate examination
• Decrease prosecution costs and duration – streamline world-wide budget
• Products with a short life cycle• Infringing products already on the market• Validate technology for partnering• Increase IP portfolio value for investment• Add value to goods & services
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Tactics to Expedite Prosecution
Tactics for expediting prosecution world-wide
• Patent Prosecution Highway (PPH)• PCT - PPH• Prioritized examination in the U.S.• Expediting U.S. prosecution in regular track• Accelerated exam in other jurisdictions such
as PACE in the European Patent Office
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Patent Prosecution Highway (PPH)
TOPIC 1: Patent Prosecution Highway
What is the PPH?• A rapidly expanding multinational program with
major implications for accelerating patent grants• Claims determined as allowable in 1st country
undergo expedited search and examination in 2nd country
• Examination in second country still done according to national criteria
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Patent Prosecution Highway (PPH)
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Patent Prosecution Highway (PPH)
Mottainai agreement
US; Japan; Canada; Australia; RussiaEPO; UK; Finland; Spain
“Country of First Filing” rule no longer applies(can run PPH either way)
Works as a two way street:
Expedite foreign applications with U.S. allowanceExpedite U.S. applications with foreign allowance
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Patent Prosecution Highway (PPH)
Other PPH countries of commercial interest
Mexico; China; Taiwan; Israel; Korea; Singapore(Country of 1st filing rule still applies)
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PCT - PPH
TOPIC 2: PPH from a PCT application
Between U.S. and:
Australia; China; Japan; Korea; RussiaEPO; Austria; Finland; Norway; Spain; Sweden
Step 1: IPRP or Written Opinionindicating claims are patentable
Step 2: PCT-PPH in National Stage with those claimsand claim correspondence table
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PCT - PPH
To obtain indication of patentability in the PCT Stage:
• Present patentable claims
• File a Chapter II Demand for a round of prosecution in the International Stage
• Choose a timely and competent search and examining authority: e.g., IP Australia or EPO
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PCT - PPH
PCT-PPH can be used to expedite in the U.S. and foreign countries simultaneously
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Expediting U.S. Examination
TOPIC 3: Prioritized examination program in the U.S.
• Cost = $5,100 ($2,700 for small entity) 30 claims; 4 independent claims
• 10,000 maximum per fiscal year
Objective: allowance or final rejection in 12 months
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Expediting U.S. Examination
TOPIC 4: Expediting U.S. applications in the normal track
• Start with patentable claims• First Full Action Interview Program• Interview after each Office Action• In-person interviews• After-final practice
(avoid RCE & potential delay of 12-18 months)
Current USPTO emphasis on “compact prosecution”
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Options Abroad
TOPIC 5: Options in foreign jurisdictions
• PACE program in Europe
• Expedited exam programs in Canada, the U.K. and Australia
• Special programs: e.g., green technology in Canada and Korea
• Modified examination (based on allowance in first country): Australia; Singapore; Israel; South America; Malaysia
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Coordination of Global Patent Strategy – Example 1
Pending
Issued/Allowed
Expired
Text Colors
Australia CanadaUS Japan
Korea
PCT Application
Europe
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Coordination of Global Patent Strategy – Example 1
PendingIssued/AllowedExpired
Text Colors
Australia Canada1st US
Regular exam with broader claim
scope.
Japan
Korea
PCT Application
Europe
Accelerated exam.
2nd USFiled
Prioritized exam with narrow claim scope.
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Coordination of Global Patent Strategy – Example 1
PendingIssued/Allowed
Expired
Text Colors
Australia
No PPH as examination has begun
Canada1st US
Regular exam with broader claim scope
Japan
Korea
PCT Application
Europe
2nd US
Allowed/Issued
Enter PPH
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Coordination of Global Patent Strategy – Example 2
Europe
Pending
Issued/AllowedExpired
Text Colors
US
Accelerated exam.
US
Europe
OR
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Coordination of Global Patent Strategy – Example 2
Pending
Issued/Allowed
Expired
Text Colors
Accelerated exam.
Europe
Accelerate with PACE
US Europe
OR
US
Accelerated exam.
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Coordination of Global Patent Strategy – Example 2
Pending
Issued/Allowed
Expired
Text Colors
Enter PPH
Europe
Allowed Claims
US
US
Allowed Claims
Europe
OR
War Stori
• Client wanted to launch a filter product in Japan with a premium price.
• We filed US and PCT applications
• Aggressively prosecuted the US application to allowance
• Requested examination and entered the PPH in Japan with the allowed US claims
• Received allowance from JPO in 6 months (saved 2-4 years and $$$).
• Product launched with desired price
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War Stories #1
• Client required patent in Japan. PCT and US apps were filed
• Filed European application early, used PACE procedure to expedite.
• Upon European allowance, filed request for examination and entered PPH in Japan
• Received allowance in 3 weeks! (saved 2-4 years and $$$)• US app was then allowed with broader claims• Option to file divisional app in Japan to pursue broader claims
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War Stories #2
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Patent Strategy and your Business Objectives
Strategic Overview
Benefits of expediting exam:
• Decrease prosecution costs and duration (e.g., Japan)• Speed to obtaining the first patent, exclusivity• Eliminate or reduce competition• Enhance ability to eliminate or reduce competition• Faster market entry at a premium• Increase licensing value• Enhance company and patent portfolio valuation –
added shareholder value
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Patent Strategy and your Business Objectives
Disadvantages of expediting exam:
• Up-front costs are greater• PPH 2nd country constrained by claims allowed
in 1st country• Extra time needed for R&D?• Extra time needed to generate funds for
prosecution?
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Patent Strategy and your Business Objectives
Business Considerations:
Is the perception of potential broad claim coverage more valuable than the reality of narrowed actual claim coverage?
• Early stage start-ups in the process of raising financing
• Newly public, pre-revenue companies
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Patent Strategy and your Business Objectives
Define Business Concerns:
• Are the business objectives clearly defined?• Don’t expedite exam as an academic exercise• Dangers of saying too much too early on the record• Wasting scarce resources pursuing claims which do
n’t cover the core products and services
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Patent Strategy and your Business Objectives
Develop realistic international plans:
• Overly optimistic projections may place greater emphasis on foreign jurisdictions than warranted
• Important to allocate legal resources in line with realistic operational plans
– Location of markets– Location of competitors– Your manufacturing locations
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Global Patent Strategy – Business Considerations
• It is strategically important to implement and coordinate a global patent strategy
• Work with patent counsel who understands the PPH and has close ties to competent and responsive foreign counsel who use the PPH
• Consider importance of invention and claim coverage to business
• Consider the activity of competitors (e.g., sales, manufacturing, market)
• Consider coordinated strategy to take advantage of accelerated examination in different jurisdictions and the PPH. Each country is different
THANK YOU
The Patent Prosecution Highway: Strategic Considerations in
Accelerating U.S. and Foreign Patent Prosecution
ACC Quick HitsJune 13, 2012
Dr. John K. McDonaldDr. Michael Schiff
Kilpatrick Townsend & [email protected]
