When is PPH or PCT-PPH Possibly a Good Idea?
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.
In particular, there are circumstances where a “fast-pass” treatment of an application could be strategically useful, even for an arguably narrow claim(s). For example, if your client’s commercial product or their competitor’s product falls within the scope of such claims, even a narrow one, requesting the PPH or PCT-PPH program may provide an expedited enforcement strategy. Continuations and/or divisional(s) can be filed off of the narrowly scoped PPH or PCT-PPH applications to possibly obtain broader claim scope. These continuations and divisionals would of course be treated as regularly filed applications. Clearly, the use of PPH must be integrated with a carefully planned continuation strategy, one that uses PPH for the immediate attainment of narrow claims and continuations for possibly attaining expanded claim scope.
So, during the prosecution of family related case, carefully review any claim in the ISR/WO IPER, IPEA that does not have an “X” or “Y” indicator for consideration. Likewise, review office actions for indications of allowable subject matter. Consider, in combination with the above, using PPH in an OSF (e.g., Japan and Canada) where prosecution normally is much slower compared with the OFF (e.g., United States). This may be the biggest benefit in using the PPH or PCT-PPH for U.S. innovators as there is the possibility of greatly expedited out-of-turn advancement in these countries. For example, in Japan prosecution can begin months upon acceptance into their PPH program, whereas it normally would take years to see a first action. It may be possible to obtain “fast-pass” treatment in both Japan and Canada from the allowed U.S. case, for example. So, together with the timing of receiving an indication from the USPTO or a Written Opinion of an allowable claim, Japan and Canada are perhaps the most attractive non-U.S. patent offices for this program for applicants with allowed U.S. claims and pending, not-yet-examined corresponding applications in these countries.
One reason to expedite prosecution is if the art field is one that rapidly changes and as a result, the intrinsic value of a patent is considerably shorter than the 20 years from filing date. Thus, using PPH should be considered for time sensitive technologies (business methods and software/computer). Korea as the International Searching Authority will search these classes possibly indicating allowable subject matter in the Written Opinion. Also, the PPH programs may be strategically useful if the particular circumstances would benefit from an expedited issuance of a patent, such as a licensing scenario.
When is PPH or PCT-PPH Probably Not a Good Idea?
There are certain situations where it may not be advisable 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 guidance from experienced counsel.
As mentioned previously, the “sufficiently corresponds” rule requiring that the claims allowed in the OFF verses claims presented in the OSF may not provide sufficient justification to use the program in most cases. Likewise, before considering “fast-pass” treatment in the U.S. using a Written Opinion from an International Searching Authority (ISA), check whether there are any “Box VIII issues,” and if so, whether they potentially could create estoppel.
Fundamental differences in patent law between countries need careful consideration before using PPH. For example, if you amend claims in your U.S. case for reasons under 102(e) you can inadvertently and unnecessarily narrow the claim scope otherwise obtainable for the EP PPH case. Also, the treatment of means-plus-function claim scope between the U.S. and non-U.S. countries may exclude these claims from consideration in the PPH program.
Expediting your non-U.S. case may also trigger the new divisional rules recently implemented in the EPO, which could affect budgets based on conventional prosecution time scales. Realize also that the first application (in the OFF), or a continuation thereof may likely be pending while the OSF application prosecution begins, raising the possibility of creating argument estoppel in the OSF. Likewise, due diligence in reporting to the U.S. (as the OFF) of the prosecution in the OSF should be observed to avoid possible inequitable conduct issues.
Finally, there is no precedent in our Federal Circuit for the many issues that could arise under the PPH. For many of us, not wanting to be the “test case” for U.S. precedent may be enough to simply “pass on these ‘fast-pass’ programs,” at least for now.