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.
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.
Contact Revision Legal
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.