For inventors and owners who have received, from a foreign (non-U.S.) patent office, a notice of patent allowance or a final ruling allowing at least one claim, there is a process for fast-tracking any corresponding U.S. patent application. This is called the “Patent Prosecution Highway” (“PPH”). The PPH is an international treaty-based arrangement between the US and a large number of patent offices around the world. There is a multi-nation version of the treaty and also many bilateral treaty arrangements. For example, Chile has joined the global PPH program, but Mexico has agreed to the PPH program via a bilateral treaty with the US. See information page here. Whether multi-national or bilateral, the PPH treaties are essentially the same.

The PPH is a “two-way” highway. Thus, in participating foreign patent offices, a final ruling from the U.S. Patent & Trademark Office (“USPTO”) can be used to fast-track a patent application in a foreign nation. In the US, there is no additional fee charged for requesting use of the PPH procedures. A note of caution is in order, however, since not all nations are participants in the PPH treaty arrangements. For example, Argentina’s participation in the PPH procedures ended in March 2020. The USPTO no longer accepts PPH requests that are based on Argentina patent office allowances or work products.

As of now, the PPH procedures and arrangements are still considered a “pilot project.” Thus, it is possible that the entire program will be abandoned in the future. However, the PPH procedures have been successful and many hope to see the PPH become a permanent feature of international patent law. The PPH began in 2014 and, according to the USPTO, as of May 31, 2021, there have been 72,387 total patent applications filed that sought PPH treatment with 63,751 of such applications being granted.

Eligibility

Under USPTO rules, to be eligible to use the PPH, the US application must meet the following conditions:

• Must be a utility patent application — provisional, plant, design and reissue patent applications are not eligible for the PPH program and the PPH is not available for reexamination proceedings and applications subject to a secrecy order (see here; answer #5)
•  Substantive examination of the US application CANNOT have already begun
• The patent claims made in the US application must correspond in all material respects to the claims that were allowed by the foreign-nation patent office
• The US patent application must have same earliest priority or filing date as the foreign-nation-examined application

What is the Process?

To receive an accelerated examination from the USPTO via the PPH, a patent applicant must file a request with the USPTO using a country-specific request form. Here is the one for Brazil as an example. As can be seen in the example, various information must be provided including a “claims correspondence table.” The applicant must also file copies of the relevant documents from the foriegn patent office showing the allowable claims and the patent office’s work product relevant to the request for PPH participation.

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For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

How the PPH Accelerates Examination

The Patent Prosecution Highway (PPH) allows applicants to fast-track examination of a U.S. patent application based on a favorable ruling in a corresponding foreign application. When a foreign patent office—one participating in the PPH—allows at least one claim in your application, you may petition the USPTO to expedite examination of the corresponding U.S. application by reference to the foreign office’s work product. The premise is that the foreign examiner has already searched the prior art and determined that at least some claims are allowable; the U.S. examiner can build on that work rather than starting from scratch.

The practical benefit is meaningful. According to USPTO data, PPH applications are examined and allowed significantly faster than regular examination—with first Office Actions often arriving in months rather than years. For companies operating on product development timelines where patent protection is commercially critical, the PPH can be transformative.

PPH Eligibility Requirements

To be eligible for PPH treatment at the USPTO, the application must satisfy all of the following conditions:

• The corresponding foreign application must have received a work product showing that at least one claim is allowable or allowed.
• The claims in the U.S. application must “sufficiently correspond” to the allowed foreign claims—they may be the same as, or narrower than, the allowed foreign claims.
• The U.S. application must not have received a final disposition (allowance, abandonment, or final rejection).
• The U.S. application must be a utility patent application—design, plant, provisional, and reissue applications are not eligible.
• All available prior art cited in the foreign examination must be submitted in an IDS (Information Disclosure Statement) before or with the PPH request.

Participating Countries and Bilateral Arrangements

The PPH operates through two frameworks: the Global PPH program, which involves a multilateral group of offices operating under common procedures, and individual bilateral arrangements. As of the most recent USPTO guidance, Global PPH participants include major offices such as the European Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, and others. Some offices participate only through bilateral arrangements rather than the global program.

Applicants should verify current participation status before filing a PPH request, since countries have periodically suspended or withdrawn from the program. The USPTO maintains an updated list of participating offices and their specific eligibility requirements, which can differ slightly from the general criteria.

Filing Strategy: When to Use the PPH

The PPH is most valuable when you have already received an allowance or favorable work product from a foreign office and a corresponding U.S. application is pending—particularly if that U.S. application is languishing in a backlogged art unit. The PPH request itself is relatively straightforward to prepare but requires careful attention to the sufficiency-of-correspondence requirement. Crafting U.S. claims that are sufficiently narrowed to correspond to allowed foreign claims—without giving up more protection than necessary—requires experienced patent prosecution counsel.

Consider the PPH early in prosecution strategy, not as an afterthought. If you are filing international applications in multiple jurisdictions, identify which foreign office is likely to act first and structure the U.S. claim set to maximize the chances that the PPH correspondence requirements can be met.

Contact Revision Legal

If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.