United States Patent and Trademark Office – 1 Patent Prosecution Highway (PPH) United States Patent and Trademark Office

2 Background 2006 Cross filing Applications among IP5 Offices

3 PPH: Fast Track Examination of Applications What is PPH? –When claims are determined to be allowable in the Office of First Filing (OFF), a corresponding application filed in the Office of Second Filing (OSF) may be advanced out of turn. What is the Purpose of PPH? –OSF can utilize the search and examination results of the OFF thereby avoiding duplication of work and expediting the examination process in the OSF.

4 What Are the Benefits of PPH? PPH Benefits for Applicant Provides quicker patentability determination in multiple jurisdictions. Decreases costs of prosecution.

5 What Are the Benefits of PPH? PPH Benefits for Offices –Avoid redundant work by reuse of OFF work product –Claims reduced in number and narrowed in focus to what was previously allowed –Reduced Pendency

6 PPH Requirements Claim Correspondence All claims in each U.S. application must “sufficiently correspond” to the allowable claims in the application in the OFF.

7 PPH Requirements (cont’d) Qualifying Applications –Current PPH Programs, generally speaking Paris priority applications PCT Bridge filings Certain non-binding work product e.g. EPO’s EESR –Future PCT-PPH Pilot PCT-PPH pilot among the Trilateral Offices –Positive international search reports, written opinions, and international preliminary examination reports

8 Current PPH Programs PPH Pilot to Full implementation  Japan (JPO)  Effective on January 4, 2008  Korea (KIPO)  Effective on January 29, 2009

9 Current PPH Pilot Programs Current Pilots  Australia (IPAU)  Canada (CIPO)  Denmark (DKPTO)  European Patent Office (EPO)  Finland (NBPR)  Germany (DPMA)  Singapore (IPOS)  United Kingdom (UK IPO)  Rospatent (in discussions)  Trilateral PCT-PPH (January 2010)

10 PPH Requests First OfficeStart DateRequests (as of 1 Nov. 2009) JPOJuly (Pilot) 1379 (Perm) UKIPOSept KIPOJan (Pilot) 217 (Perm) Total CIPOJan ,164 IPAUApril EPOSept DKPTONov DPMAApril IPOSFeb NBPRJuly RospatentEnd of

11 Cumulative Number of PPH Requests

12 Number of PPH Requests by Technical Center

13 Important PPH Metrics* Average First Action (FA) Pendency from Grant of PPH Request –Non-PPH 25 months (from filing date of application to FA) –PPH 2-3 months (from grant of PPH request** to FA) Overall Allowance Rate –PPH cases: 91% –Non-PPH cases: 44% Actions per disposal –PPH cases: 1.7 –Non-PPH cases: 2.7 ** application must have completed all its pre-exam processing and is ready for examination. * As of November 2009

14 Future Plans USPTO Action Plan to enhance PPH: define target numerical goals and develop global strategy to reach those goals Align PCT with PPH via the Trilateral pilot program Conduct PPH awareness campaigns, internationally and domestically Plurilateral PPH Cooperation –Streamline procedures –Share best practices and statistics –Provide users with one stop access to information

15 The Expanding PPH Network GPTO IP Australia Mar DKPTO UKIPO KIPO CIPO EPO Sep ROSPATENT IPOS NBPR Feb APO Apr Sep Jan Mar Apr Nov May 2009 Apr Jul Apr Jul HPO Jul Jan Jul USPTO : under consideration : full implementation : pilot implementation Jul Oct Nov Aug Jul JPO Oct Jan 2010

16 Thank you