What is a Patent Prosecution Highway (PPH)?

A PPH or Patent Prosecution Highway is a method of expediting the prosecution of patents in a way which removes a number of the normal procedures of prosecution, thereby acquiring protection for a patent quicker and much easier. Launched in the past between national and regional patent offices around the globe, these patent highways, most of them existing as two-way highways between one PTO and another, greatly speed up the patent examination process of applications through sharing of information on examinations, and benefiting from the results of work done by each participating office. The main idea is that the claims of the application for which an accelerated examination under the PPH is requested, should sufficiently correspond to claims which were positively indicated as patentable at the other Patent Office. If the positive examination result of a national or regional office has been received in one location, the PPH makes it much easier for the applicant to receive a grant in the second location on a pending application.

This solution reduces the examination workload and also improves the quality of the patent and its implementation.

To qualify for a PPH, a separate PPH agreement needs to exist between each of the participating offices in both directions.

On the 10th of October 2016, it was announced that the EPO (European Patent Office) and ROSPATENT (the Federal Service for Intellectual Property), would launch a comprehensive Patent Prosecution Highway pilot programme to expedite patent examination procedures already available in both offices.

The PPH program also enables applicants whose claims have been deemed patentable, to have corresponding applications with a PPH partner office, fast-tracked as offices exchange relevant information and exploit work results.

This pilot programme is intended to last for three years, commencing on the 1st of February, 2017, to end on the 31st of January, 2020.

The results of the pilot programme will be evaluated by ROSPATENT and the EPO to determine if and how the programme should continue and be executed after the three-year trial period. The pilot programme may be terminated for a number of reasons, or extended if necessary, to better analyse the viability and practicalities of the programme. A notice of this decision will be published before the end of the PPH Pilot programme date of 31st January, 2020.

The following requirements must be met for eligibility to participate in the EPO - ROSPATENT PPH pilot programme:

  • The EP application being requested to participate in the pilot programme must have the exact same earliest (priority or filing) date with a corresponding national application filed with ROSPATENT or a corresponding PCT application which has an ISA (International Searching Authority) or IPEA (International Preliminary Examination Authority) report with ROSPATENT.
  • The said corresponding application(s) should have at least one claim which has been deemed patentable by ROSPATENT, i.e. it has been proven to have novelty, an inventive step, and have industrial applicability.
  • The date for the substantive examination of the EP application being requested is still in view, i.e. the examination has not begun.
  • All of the claims of the EP application being requested to participate in the PPH pilot program must correspond sufficiently with the patentable claims in the corresponding OEE (Office of Earlier Examinations) application(s).

The following documents are required for participation in the EPO - ROSPATENT PPH pilot programme:

  • A request form EPA/EPO/OEB 1009 (Participation in the Patent Prosecution Highway (PPH) pilot programme) available at the EAPO website, to be filed.
  • A declaration of claims correspondence to be filed as included in the aforementioned request form EPA/EPO/OEB 1009.
  • Either a copy of the latest work product at the international phase of a PCT applications well as ISA or IPEA reports and a translation of it in one of the EPO official languages or all of the office actions for the OEE corresponding application(s) which contain therein the patentable claims and a translation in one of the EPO official languages.
  • Copies of all other documents asides patent documents of the OEE Office Action(s) or the work product mentioned above.
  • A copy of the patentable claim(s) from the OEE application(s) as well as a translation in one of the EPO official languages.

The request for participation in the PPH pilot programme is granted if the above-mentioned requirements are met. If granted, the EP application process will be expedited. If the request however does not meet the listed requirements for participation in the PPH pilot programme, then the applicant will be notified and be given a singular opportunity to correct any defects in the request. If these deficiencies are still not corrected after the notification, then the application will be removed from the programme and the applicant notified.

Below is a list of participants of the Patent Prosecution Highway programme worldwide:

  • The German Patent Office (DPMA)
  • Danish Patent and Trademark Office (DKPTO)
  • The Icelandic Patent Office
  • The Intellectual Property Office of Australia
  • The Austrian Patent Office
  • The UK Intellectual Property Office (UKIPO)
  • The Hungarian Intellectual Property Office (HIPO)
  • The Office for Patents and Trademarks of Spain
  • The Office of Intellectual Property of Canada (CIPO)
  • The Israeli Patent Office (ILPO)
  • The Intellectual Property Office of the Republic of Korea (KIPO)
  • The Norwegian Industrial Property Office (NIPO)
  • The Patent Office of Poland (PPO)
  • The Institute of Industrial Property of Portugal
  • The Federal Service for Intellectual Property of the Russian Federation (ROSPATENT)
  • Intellectual Property Office of Singapore (IPOS)
  • The Nordic Patent Institute (NPI)
  • United States Patent and Trademark Office (USPTO)
  • The Finnish Patent and Registration Office (PRH)
  • Swedish Patent and Registration Office (PRV)
  • The Japan Patent Office (JPO)
  • The Israel Patent Office (ILPO)
  • The Korean Intellectual Property Office (KIPO)
  • The Norwegian Industrial Property Office (NIPO)
  • Polish Patent Office (PPO)
  • The Institute of Industrial Property of Portugal (INPI)