PPH: An Agreement With Disagreements?
The advent of information technology does help the world to get closer to each other. These mutual interconnections have invariably solved various contentious problems that would otherwise be difficult to address. The intellectual property regime is witnessing a constant increase in the pressure of disposing of various applications that have been filed at various domestic offices across the world. The development of Patent Prosecution Highway (PPH) by the United States Patent and Trademark Office (USPTO), primarily working on the premise of having a bilateral linkage of two patent offices, for alleviating the burden of work. Through this, the second patent office takes advantage of the work that has already been completed in the first patent office. This helps in reducing the burden on the patent office and it allows an expedited patent examination in a second patent office when a corresponding claim has already been found patentable in the first office. This way the second patent office needs not to undergo repetition of search and examination resulting in an expedited process. The first patent office is generally known as the office of earlier examination (OEE) or Office of First Filing (OFF) and the second patent office is called the office of later examination (OLE) or Office of Second Filing (OSF). The first PPH was developed between USPTO and Japan Patent office as a pilot program that began on July 3, 2006, which was implemented on a full time and permanent basis on January 4, 2008.
The conundrum of allowable claims and requirements
Well, an opaque analysis does seem to put PPH applicants in an advantageous position for an expedited examination. But various issues seem to be unaddressed. Various PPH were being entered by USPTO with countries like the UK, Canada, Korea, Australia, European patent office, Denmark, etc. On close analysis, there is a difference in the participation requirement for the PPH for each country. Like for example, Japan requires copies of the USPTO cited references but the UK does not require that. Instead, it requires submission of search and examination reports of USPTO. Canada requires that the application even of PPH must be made open to the public. Korea was the first country among PPH participants which does not restrict participation to those applications that have not yet started the examination. These different requirements prove an uneven arrangement among the countries with the PPH.
Another major issue that comes up is the difference in the ambit of allowable claims in the individual country. All the claims in the OLE must be limited to the scope of claims allowed in OEE. An applicant who has preferred a broader scope of claims might not be able to get through the PPH subject to varying patent laws applicable in the respective country. Moreover taking the PPH route might be more costly to the applicant due to various filing requirements involving specific documents, writing letters, and filing a petition.
One of the major reasons why not to choose the PPH route is the country-specific alternative procedure already available in the respective country under their local patent law. Almost all the country does have some of the other procedures whereby it provides the applicant an option to speed up the examination process if it is necessary. Canada has a Special Order Request whereby the applicant can request an urgent examination, failure to which will result in prejudice to the person’s rights. Under Section 188.8.131.52 of the Australian Patent Manual of Practice, the applicant can request an expedited examination with a legitimate reason. European Patent Office has a program called PACE in which it allows the applicant to have all examinations and communication within a tight deadline. Section 17.05.1 of the UK Manual of Patent Practice too provides the applicant to get an accelerated search if the adequate reason is being provided.
The future with PPH
Since the advent of PPH, it has grown altogether. In the latest move, the Intellectual Property Office of Singapore and the National Institute of Industrial Property of Brazil has launched a pilot PPH program from 1st May 2020. The Indian Union Cabinet in 2019, too, approved the proposal to enter its first pilot PPH program for three years with the Japanese patent office as its first PPH program. As per the statistics in 2019, the USPTO allowance rate for applications that entered the PPH was 84%, as compared to the allowance rate across all patent applications which was 74%. In a move to bring this for a global consideration, USPTO launched two pilot programs- Global PPH and IP5 PPH in 2014. It specified that both will run concurrently and are substantially identical and the PPH request may be filed based on the work of any office participating in either pilot program. Through this program, even the opinion of the International Searching Authority and International Preliminary Examining Authority issued within the PCT framework are allowed to be submitted for PPH only if the participating office has been the part of examining under PCT. Currently, the Global PPH has 27 countries and IP5 have 5 countries as of June 2020. But on the other hand, a report shows that from 2006 till 2018 fiscal year-end, relatively fewer PPH requests have been filed at USPTO. Approximately 55,000 PPH request has been filed at USPTO, while the total number of utility patent application filed in the same period is 6,824,912. This is because of some reason like high cost and applicant not allowed filing any further amendment which has been subsequently filed with PPH request. These things must be learned and rectified by countries that are planning to enter the PPH in the near future.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back to us at firstname.lastname@example.org.