Politics / Law

PPH – Avoiding potholes on the Patent Prosecution Highway

06.03.2012

A For years, the world’s major patent offices – including the EPO, USPTO and JPO – have been collaborating in the Patent Prosecution Highway (PPH) programme. Under the PPH, an applicant whose claims have been allowed in one participating patent office (Office 1) may pursue those claims in another participating patent office (Office 2). Under the PPH, Office 2 examines the claims in an accelerated manner, and may rely on the examination results of Office 1. The stated purpose of the PPH is to reduce work in examination and improve overall patent quality. An admissible request for examination under the PPH in Office 2 includes filing copies of the allowed claims and examination reports in Office 1. Translations of these documents may also be necessary.
At first, the PPH sounds like a great idea. Have one patent office search and examine claims for allowance, and then transfer this allowance to other participating PPH offices, allowing significant savings in both time and cost.
However, it is a common misconception that the PPH guarantees allowance of claims in Office 2 based solely on a previous allowance in Office 1. In fact, claims allowed in Office 1 do not automatically become allowable in Office 2 by requesting examination under the PPH. Office 2 may (but need not) rely on the examination results of Office 1. For instance, the EPO as Office 2 will often perform its own independent search and examination on a PPH application, even when the claims have already been allowed in another PPH-participating office. This situation can lead to unpleasant surprises.
For example, the claims allowed in Office 1 will often have been significantly restricted there to gain allowance. Following allowance in Office 1, the claims then enter Office 2 under the PPH in this restricted form. In an independent search, Office 2 (e.g. EPO) may identify prior not cited in Office 1, or may interpret aleady cited prior art differently than Office 1. In such a case, it may be impossible to obtain allowance in Office 2 for the claims already allowed in Office 1. However, since Office 2 has already searched restricted claims, it may also be impossible to shift to other allowable subject matter, because claims may only be amended within the bounds of what was searched. In such cases, the applicant may need to file costly divisional applications to pursue other claims.
Applicants are therefore advised not to view the PPH as a means of circumventing the patentability requirements of one office by relying on allowance in another. Subject matter not allowable in Office 2 does not become allowable there simply by participation in the PPH.

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