What is the Patent Prosecution Highway and What's the Speed Limit? Episode 97

What Is the Patent Prosecution Highway (PPH)?

This episode is about how to speed up your patent application using something called the Patent Prosecution Highway, or PPH. I did briefly mention it in Episodes 30 and 38, which were about how to speed up your patent application, but I wanted to dedicate a full episode to it.

As you might be able to tell from the term “highway,” it has something to do with moving your patent application faster than the normal route.

Basic Concept of the PPH

Basically, if you have patent applications in multiple countries, and one of them gets allowed or receives a positive patentability opinion, you can tell the patent office in another country to move your application to the front of the line—because you’ve already been allowed somewhere else.

Now, this doesn’t guarantee that your patent will be allowed in the U.S., but there’s a higher chance than normal. If your application got allowed in one country, it’s more likely it will be allowed in the U.S. I’m going to focus mainly on how this works in the U.S.

How the PPH Works

Certain countries have agreements with each other that if at least one claim has a final ruling of being allowed, then you can fast-track your patent in a different country.

There are lots of benefits to using the PPH, and one big benefit is that there’s no extra fee to the patent office to request participation. Now, there may be some nominal attorney fees to prepare and submit the request, but it shouldn’t be that expensive.

Countries with PPH Agreements with the USPTO

Countries that have agreements with the U.S. Patent and Trademark Office include Australia, the European Union, Canada, China, Israel, Japan, Korea, Russia, the UK, Argentina, and several others. Some of these programs are pilot programs, but hopefully they’ll continue indefinitely.

Filing a PPH Request: Form PTOSB/20GLBL

You’ll need a form called PTOSB/20GLBL, titled “Request for Participation in the Global/IP5 Patent Prosecution Highway Pilot Program in the USPTO.”

On this form, you’ll put in some information about your U.S. application, like the application number, inventor name, and title.

You’ll also need to list the country where you got the allowed claim, the corresponding foreign application number, and the type of document showing the allowed claim. This could be an actual granted patent, a notice of allowance, or another official document.

You can attach the document or, if it’s available online, you can ask the USPTO to retrieve it. You also have to submit a list of prior art references that were cited by the foreign patent office, if such a list exists.

Claim Correspondence Page

On the second page of the form, you’ll list by number the claims in your U.S. application that correspond to the allowed claims in the foreign application. Then, you include an explanation of the correspondence.

If it’s simple, you can say something like: “Claim 1 in the U.S. application is identical to Claim 1 in the European application.”

What If You Filed in the U.S. First?

You might be thinking, “This doesn’t help me much because I’m filing in the U.S. first.” That might be true—but if you get an allowance in the U.S., you can speed up your applications in other countries using the PPH based on your U.S. allowance.

But the most common use of the PPH is when you file a PCT application.

Using the PPH with a PCT Application

If you’ve listened to my previous episodes on the PCT (Patent Cooperation Treaty), you know that it’s an international application and you get an opinion fairly quickly from a PCT examiner. Often, this happens before you even file your U.S. application, if you filed your PCT application first.

You get what’s called a Written Opinion from a PCT examiner or an International Preliminary Examination Report.

PPH via the PCT: Form PTOSB/20PCT-EP/US

If you’re a U.S. applicant and filed your PCT application through the U.S., you’ll typically get a PCT examination conducted in the U.S. If you receive a positive patentability opinion, you want to look for a form called PTOSB/20PCT-EP/US.

This is titled “Request for Participation in the Patent Cooperation Treaty-Patent Prosecution Highway Pilot Program in a U.S. Application Where the USPTO Was the ISA or IPEA.”

On this form, you’ll include your U.S. application information, the corresponding PCT application number, the filing date, and other basic information.

Documents to Attach

You should also attach the following:

• A copy of the Written Opinion or Preliminary Examination Report.

• A copy of all claims that were found to have novelty, inventive step, and industrial applicability in the PCT application.

• An Information Disclosure Statement (IDS).

• Copies of specific prior art referenced in the PCT opinion.

You’ll also need to complete the claim correspondence page, where you match U.S. claims with PCT claims.

How Fast Is It?

There’s no guarantee when your application will be examined under the PPH, but the USPTO says that it typically takes about 2–3 months from when the request is granted.

This is much faster compared to the standard 1–2 years it currently takes for many U.S. patent applications to receive their first substantive examination.

What Are the Chances of Allowance?

What are your odds of success? According to USPTO data, the overall allowance rate for applications using the Patent Prosecution Highway is about 84%, compared to only 53% for regular, non-expedited applications.

So while it’s not a guarantee, getting a positive patentability opinion in another country—or from your PCT examiner—significantly boosts your chances in the U.S.

Why You Should Consider Using the PPH

This is something you should really consider doing if you receive an allowance from another country or a positive opinion from your PCT examiner.

There’s not much downside—except for some attorney fees—and it’s a great way to give your U.S. examiner a little push. It shows that someone else already thought your invention was patentable, and it can plant that seed in your examiner’s mind that this application deserves to move forward.

I’m Adam Diament, and until next time, keep on inventing.