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"PPH is one of the effective ways to speed up examination, and it is an effective tool that can help inventors obtain foreign patent grants quickly and efficiently. ”
来源:IPRdaily中文网(iprdaily.cn)
Author: Li Ji, founder of Beijing Ruisheng Mingjie Intellectual Property Agency
摘要 >>
PPH is one of the effective ways to expedite examination, and it is an effective tool that can help inventors obtain foreign patent grants quickly and efficiently. PPH (Patent Prosecution Highway): The national patent office of the first application of which the applicant files considers that at least one or more claims of the application are patentable, and the applicant may, on the basis of the results of the work of the first application, request the patent office of other countries of the subsequent application to expedite the examination of the application through the PPH.
1. What is PPH?
PPH, also known as the Patent Prosecution Highway, is a patent office (OFF) where the applicant files the first application considers at least one or more of the claims of the application to be grantable, as long as the relevant subsequent application satisfies certain conditions, including that the claims of the first application and the subsequent application are adequately corresponding, If the result of the OFF work can be obtained by the patent office (OSF) of the subsequent application, the applicant can request the OSF to expedite the examination of the subsequent application based on the result of the OFF work. It can also be understood that PPH refers to a business cooperation between patent examination authorities to share examination results, with the aim of helping applicants obtain patent rights in overseas applications as soon as possible.
2. Why PPH?
(1) Significantly faster review: According to the data provided by the PPH Global Portal, the average turnaround time from request to access is 5.8 months for a regular PPH, compared to an average of 18.8 months for all applications, and 11.4 months for a regular PPH from request to closure, compared to an average of 30.7 months for all applications.
(2) Increased predictability of applications: Since countries acceding to the PPH will fully consider the search results and affirmative conclusions of the first filing country, although the PPH application is not a mechanism for mutual recognition of examination results between countries, in fact, the grant rate of patents under the PPH route will be greatly improved. In the United States, for example, the average grant rate for regular PPH is 86%, compared to 53% for all ordinary applications.
(3) Reduce the number of office actions and save application costs: PPH can greatly reduce the filing cost of applicants. The reason for this is that the PPH significantly reduces the number of times an office action is issued, so the applicant can reduce the number of times to respond, thereby reducing various expenses such as attorney's fees. In the United States, for example, according to the statistics of the United States Patent and Trademark Office, the number of PPH applications that can be granted after a single call is 43.6% higher than that of all ordinary applications.
3. Interpretation of PPH cases
Case 1, U.S. invention patent application, US17070948, filed with the U.S. Patent and Trademark Office on 10/15/2020, filed 6 months after filing the PPH request, a total of 16 months and 2 days from the application to the grant, and 8 months and 20 days from the PPH request to the grant.
Case 2, U.S. invention patent application, US17471120, filed with the U.S. Patent and Trademark Office on 9/9/2021, filed 1 month later, PPH request 1 month later, a total of 5 months and 24 days from application to grant, and 4 months and 25 days from PPH request to grant.
Case 3, European invention patent application, EP19834088, filed at the European Patent Office on 2/4/2021 and filing a PPH request at the same time, with a total of about 11 months and 10 days from application to grant, and about 5 months from application to receipt of the first office action.
4. Frequently Asked Questions and Misconceptions About PPH
1) Q: If I wait until the Chinese invention patent application is authorized and then apply for an overseas patent such as the United States or Japan, will the overseas patent be authorized as well?
A: If you wait until the Chinese invention patent application is granted and then apply for an overseas patent such as the United States or Japan, procedurally speaking, you can file a PPH request to the later application (i.e., the overseas patent application awaiting examination) based on the grant result of the earlier application (i.e., the granted Chinese invention patent application) and the claims at the time of grant. PPH has the advantage of speeding up the review process and increasing the expectation of authorization. However, it should be noted that if the overseas patent application is applied for through the Paris Convention at this time, the application for a Chinese invention patent may have exceeded 12 months from the filing date, that is, the 12-month priority period has been exceeded, and the overseas patent application can no longer be applied for due to the overdue period. In some cases, such as the United States, if it is more than 12 months but still within 14 months, there is still an opportunity to remedy.
2) Q: Does PPH reduce the scope of protection?
A: One of the four elements of a PPH claim is claim correspondence, the claims of the later application (pending examination, the application to file a PPH claim) must be the same as the claims of the earlier application or less than the claims of the earlier application, and the scope of protection of the claims of the later application shall be equal to or less than that of the earlier application.
The PPH procedure is mainly based on the sharing of examination results among countries, and based on the differences between countries, what was not granted in the earlier application may have the opportunity to be granted in the later application, and if considered from this perspective, the PPH directly narrows the scope of protection. For example, a claim that only contains the title of the subject matter for use does not comply with the relevant provisions of the U.S. Patent Law, but complies with the relevant provisions of the Chinese Patent Law.
5. Summary
PPH is one of the effective ways to speed up examination, and it is an effective tool that can help inventors obtain foreign patent grants quickly and efficiently. Applying for an authorization earlier does not mean that a later application for a certain grant is made, but the predictability of a later application is high. The PPH helps to speed up the examination process, reduce the number of office actions, and is relatively more significant in terms of speeding up the examination process.
(Original title: Interpretation of PPH Procedures for Accelerated Examination of Overseas Invention Patents)
来源:IPRdaily中文网(iprdaily.cn)
Author: Li Ji, founder of Beijing Ruisheng Mingjie Intellectual Property Agency
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