01 April 2009

A practical guide to the patent prosecution highway

Managing Intellectual Property

Fasten your seatbelts. John M Carson, Alan Kessler and Hugh Dunlop explain how the PPH works in practice, and ask which applicants will most benefit from it

One-minute read

The patent prosecution highway consists of a series of bilateral alliances between some of the world’s major patent offices, including the USPTO, EPO, JPO, UKIPO and KIPO. It is designed to minimise duplication of work by examiners by allowing offices to draw on examination conducted in another office and use it as a jumping-off point. With the first PPH programmes now more than a year old, many applicants have already experienced them. Some trends are apparent, such as the preference for the US-Europe over Europe-US route, and there are aspects that clearly need further work, such as the relationship with the PCT. In particular, for the PPH to become valuable at the EPO, ex-PCT applications entering the regional phase need to be accepted. Overall, though, the PPH potentially offers substantial benefits to applicants, including faster examination and lower costs – benefits that have proven particularly attractive for applicants in the computing field.

The patent prosecution highway (PPH) is a bilateral and bidirectional mechanism to share work generated by a first patent office with a second patent office. There is a developing set of bilateral alliances among the world's patent offices that make use of the PPH. The United States Patent and Trademark Office (USPTO) paved its first stretch of highway to the Japan Patent Office (JPO) with a trial programme in July 2006. Since then, the US PPH programme has grown to include six other trial segments linking it to the United Kingdom (UKIPO), Korea (KIPO), Canada (CIPO), Australia (IPAU), Europe (EPO), and Denmark (DKPTO). On January 3, the JPO-USPTO link became the first fully implemented programme, and since then Korea and the United Kingdom have followed suit.

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A practical guide to the patent prosecution highway

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