Patents

“Fast-Pass” Patent Prosecution of Priority-Related Applications

Who doesn’t like to cut to the front of a long line?  In certain situations, the Patent Prosecution Highway (PPH) and Patent Cooperation Treaty-Patent Prosecution Highway (PCT-PPH) programs may provide for innovators to do just that.

The PPH and PCT-PPH programs are bi-lateral, bi-directional alliances among the World’s Patent Offices that were created to take advantage of the inherent redundancy of searching the prior art and examining essentially identical patent applications filed in multiple countries.   In a nutshell, if one Patent Office is further along in the patent procurement process and has indicated allowable claims in an application, then it may be possible to advance, out of turn, a corresponding (priority related) patent application in another Patent Office.  However, out of turn means only that.   There is no “full faith and credit” between Patent Offices – in other words, just because one Patent Office believes your invention may be patentable, the other Patent Office may not, and each will typically make its own independent assessment of the invention, taking into account its patent rules and procedures.   Even so, getting to the front of the line at any Patent Office still may have certain advantages.

First, there is a vocabulary of terms and acronyms that are used in the PPH and PCT-PPH programs and briefly discussed here.   There is the Office of First Filing, or “OFF,” where the application was first filed.   The Office of Second Filing, or “OSF,” is the patent office the corresponding application will request to receive the “fast-pass” treatment under either the PPH or PCT-PPH.   The OFF provides the “work product” containing an indication of allowable claims that is considered by the OSF.   The OSF requires this, along with proper priority and a requirement that no substantive examination has begun in the OSF, before granting your request for PPH or PCT-PPH.  There are now a number of pilot PCT-PPH programs between the United States Patent and Trademark Office (USPTO) with the European Patent Office (EPO) and other foreign offices, such as Korea, where a PCT with a U.S. priority could receive “fast-pass” treatment in the U.S.   This latter pilot program makes the PCT-PPH likely to receive more attention by U.S. innovators to possibly “fast-pass” their PCT applications in the USPTO and elsewhere.

Having a valid priority relationship between your first filed application (in the Office of First Filing, or “OFF”) and the application you desire “fast-pass” treatment (in the Office of Second Filing, or “OSF”) is the first requirement for either the PPH or PCT-PHH program.   Examples of some of the proper priority relationships for eligibility in the PPH and PCT-PHH program in the U.S. are available from the United States Patent and Trademark Office website and the patent offices of participating countries, which include, for example, Japan, Canada, Korea, the EPO and soon, China.   In effect, a family-related application, either through a foreign priority, a PCT application, or a domestic priority is acceptable for meeting this requirement.

Basically, the other requirements include an allowable claim in one country (the OFF), lack of any examination in the target country (the OSF), a Request Form provided by the OSF, copy of the office actions and references cited, and a “claim comparison chart” of the allowed claims from the OFF with those to be presented in the OSF.   This last item is not a “claim chart,” in that it is not a claim comparison with any art cited, just a statement that the OSF claims sufficiently correspond to the allowed ones.   The USPTO is unique among the participating countries as it further requires explaining other items that appear on International Search Reports.   In particular Box VIII items, which usually involve clarity and claim support issues, might make most U.S. patent practitioners uneasy if forced to respond.  Responding to these items preemptively, e.g., before any corresponding U.S. rejection is issued, can arguably result in estoppel.

There are certain situations where it may be advantageous to use the PPH or PCT-PPH programs, recognizing that this is a case-by-case basis analysis that requires careful consideration of a number of factors under competent guidance from experienced counsel.   On the other hand, there are certain situations where it may not be a good idea to use the PPH or PCT-PPH programs.  These particular situations are covered in “When is PPH or PCT-PPH Possibly a Good or Bad Idea?”

Chris Knors

About Chris Knors

Dr. Knors' practice is focused in technologies that involve chemistry, polymers and materials, such as pharmaceuticals, medical devices, glucose monitoring, eye care, herbicides, fungicides, pesticides, functional coatings, semiconductor manufacturing processes, glasses and fibers, lubricants, rechargeable batteries, metallurgy, ballistic materials and nanomaterials. Dr. Knors provides counseling with regard to patent portfolio management and strategy with issues that include licensing, collaborations and technology acquisitions, patent validity, infringement, reexamination, and design around strategies. Dr. Knors has performed intellectual property due diligence investigations on behalf of clients seeking to acquire or market medical devices and early and late stage pharmaceutical product candidates, and assisted clients in technology transfer in the agrochemical, medical device and pharmaceutical fields.

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