The Patent Prosecution Highway is a set of initiatives for providing accelerated patent prosecution among 23 nations, which provides a method for expediting examination of a pending patent application in a foreign country. Once one of the enrolled countries has approved an application for issuance, the application may be eligible for the Patent Prosecution Highway (PPH) in other countries signed on to the initiative.
The application in the foreign country should be identical to the original application that was ultimately approved in one of the member countries. This means that if an applicant were granted a patent in the United States, the patent application would also be eligible for the PPH in one of the member countries, and if one's patent was granted in one of the member countries, it would be eligible for the PPH here in the US.
PPH mainly applies to applicants who will apply abroad, and it is particularly helpful for entities that want their patent examined more quickly-which means the patent might be issued abroad faster, which then means having enforceable rights abroad sooner.
There are still considerations to manage when instituting the PPH abroad. For example, if the patent was issued in the US, you need to take affirmative steps to request and enter the PPH in China or elsewhere in a timely manner. If, during the patent prosecution process, the originally filed patent application is amended to address an issue raised by the Patent Office, then you need to be sure to reflect those changes in foreign applications to be eligible for the PPH.
Steps for using the Patent Prosecution Highway
Ensure that you file your foreign patent application in a timely manner.
Secure issuance of the US registration.
Amend the claims in the foreign application to reflect those in the allowed US application, then file the request for the PPH on a timely basis.
Be aware that in certain countries, once the foreign country starts to examine the patent, it's probably no longer eligible for PPH. Timeliness is very important.
There is no guarantee of anyone getting the patent they apply for, even if they go through the PPH, as the foreign patent is still examined according to local laws. The local office still has the power to decide whether something is patentable or not. The PPH just puts the application on a "fast track" for examination and allows a bit of deference to the applicant's issued patent and the claims therein.
To learn how we can help you expedite your patent, contact us today.
WILLIAM R. SAMUELS