Use the Highway: A New Paradigm for International Patent Portfolio Management

What if there was a new way to manage an international patent portfolio that results in lower costs and quicker issuances of patents? If this question piques your interest, read on as I walk you down that highway, or what the USPTO calls the “Patent Prosecution Highway.”

The Patent Prosecution Highway (“PPH”) is a program developed to promote fast-track patent examination procedures and allow patent offices from around the world to take advantage of work already done by other offices. The PPH is one of the initiatives being undertaken by the USPTO to help with the always-increasing load of patent examinations.

The USPTO examined the highest number of applications in history in fiscal year 2008. The office examined 448,003 applications, representing a 14% increase over the previous year.

With the increasing globalization of the world’s economy, many patentees file patents in several countries and prosecute them relatively simultaneously. This can lead to a significant duplication of efforts, with more than one patent office performing prior art searches and examining the claims in light of the prior art found. It would seem to make sense to take advantage of the work done by one patent office, thus making issuance in other countries a more administrative proceeding. It is this commonsense approach that is embraced by the USPTO with the PPH program.

Under the PPH program, an applicant whose patent application contains at least one allowed claim in one country can request that another country fast-track the examination of the corresponding application. In theory, this fast-track procedure will involve the second patent office insuring that jurisdiction-specific requirements are met and that a thorough examination was, in fact, performed by the first patent office. The PPH program is intended to improve efficiency and patent quality and reduce Examiner
workload.

The PPH is instituted by a number of direct agreements between the USPTO and other individual patent offices. To date, the USPTO has entered into such agreements with Australia, Canada, the European Patent Office,Germany, Japan, Korea, the United Kingdom, and Denmark.

All of these programs, with the exception of Japan, are pilot programs and have not been made permanent. Talks are currently underway between the USPTO and patent offices in other countries as well, meaning that the list of PPH countries may continue to grow. All patent portfolio managers should take a serious look at changing the method of obtaining patents internationally in view of the PPH. By way of example, it is common for a multinational corporation to file all priority-establishing applications in a single jurisdiction, typically the United States, and then pursue those applications further internationally through the Patent Cooperation Treaty, followed by branching out to several other countries with later national stage filings. This is a reasonable procedure, even for companies that develop ideas outside the United States.

With the PPH program, it may now make sense for companies to first file in the country in which the invention was developed and hold off on a US filing until a later date. For example, if an international company invents in Denmark, it may make sense to first pursue an application in Denmark in the hopes that the Danish Patent Office will quickly allow at least one claim. Once this happens, the applicant can then fast-track a later-filed US application, thus greatly reducing the US prosecution costs and time to issuance.

Conversely, US companies should now consider holding off examination in those other countries in which the PPH program is available until a priority US application obtains an allowance. Once that happens, examination can be requested in those other countries with the request to fast-track applications based on the allowance in the United States. The PPH program is relatively new with some of the PPH agreements coming online at the end of 2008. The full impact of the PPH program on the USPTO and more specific details on exactly how this program works remain to be seen. Nonetheless, the PPH offers an attractive route to potentially decreasing costs and speeding the allowance of patents. So, take a look down that Highway and see if it doesn’t take you where you would like to go.

One of the founding partners of Carstens & Cahoon, LLP, Colin Cahoon concentrates his practice in patent law with an emphasis on patent portfolio management. 

This blog is maintained by Carstens & Cahoon, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.cclaw.com

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