Prosecution Highways: How They Work

April 2009

After an initial trial period implemented in cooperation with the Japanese Patent Office, the U.S. Patent and Trademark Office (USPTO) has entered into so-called "patent prosecution highway" (PPH) arrangements with a number of foreign patent offices. These arrangements allow patent applicants to get their claims through the USPTO on an expedited basis if the same claims have been determined to be patentable by a foreign patent office participating in a PPH program. These PPH programs are mutual, which means that an applicant with one or more claims allowed in the United States may also request expedited examination before the foreign patent office participating in the program.

As of the posting of this article (April 13, 2009), the PPH program with the Japanese Patent Office was implemented on a full-time (i.e., permanent until reevaluated) basis as of January 4, 2008. The status of the other PPH programs in which the USPTO is a participant is as follows: (1) Canada - pilot program has been extended to January 28, 2011; (2) Australia - pilot program expires April 14, 2009; (3) United Kingdom - pilot program has been extended until further notice; (4) Denmark - pilot program expires November 3, 2009; (5) Europe - pilot program expires September 29, 2009; (6) Singapore - pilot program expires February 2, 2010; and (7) Korea - program became full-time as of January 29, 2009.

In order to participate in a PPH program, the applicant must submit a request for participation in the PPH program and a petition to make special (i.e., expedite) the application.

A petition fee of $130.00 (as of April 13, 2009) must also be paid. Copies of all Office Actions submitted in the foreign patent application must be submitted to the USPTO, together with copies of all references cited in such Office Actions. The applicant must provide a claims table showing the relationship between the U.S. and foreign claims. The U.S. claims must "sufficiently correspond" to the foreign claims, which means that they must be the same or similar in scope. The request to participate and petition to make special must be filed electronically.

If the petition is granted, the application will be advanced out of turn for examination. In order to qualify, examination of the U.S. application must not have begun. If a petition to make special on the basis of a PPH program is granted in a parent application, that determination does not carry over to continuation or continuation-in-part applications. If expedited examination is requested in a later application, a separate petition must be filed.

There are complicated rules concerning what types of utility patent applications qualify for the PPH program. Applicants would be well advised to consult with a patent attorney to determine whether the U.S. application qualifies for participation in the program. Provisional, plant, design, reissue, reexamination applications and applications subject to secrecy orders do not qualify.

Foreign patent offices have their own forms and procedures for requesting participation in a PPH program. Links to those requirements are provided on the USPTO website.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.