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USPTO Experiences with the Patent Prosecution Highway

(PPH)

Paolo Trevisan

Patent Attorney

Office of Policy and International Affairs

United States Patent and Trademark Office

History of the PPH Program

• Applications today are filed globally

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History of the PPH Program

• Backlogs in offices around the world began to explode in the late 1990s

• The number of applications filed in multiple offices also started to steadily increase

• Offices began discussing potential ways to improve efficiencies – focusing on worksharing

• PPH began as a pilot in between the JPO and USPTO in 2006

• Today - 30 offices worldwide; 26 with USPTO

Why Worksharing?

Offices seek ways to re-use the search and examination results completed on related or cross-filed applications in an another Office to:

•Minimize duplication of work

•Enhance examination efficiency and quality

•Deliver real benefits to end users

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The PPH Program

•Benefits to applicant of using the PPH program:

– Significantly lower prosecution costs

• Higher allowance rate

• Fewer actions per disposal

• Reduced rates of RCE filing and Appeal

– Fast-tracked examination improving timeliness of patent issuance

– Potentially higher quality than can be delivered by any single office acting individually

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PPH Basics

• What is PPH?– When claims are determined to be allowable in one

Office, a related application with corresponding claims filed in another PPH office is fast-tracked for examination

– Paris Route PPH and PCT PPH

PPH Basics

• Two types: Paris Route and PCT

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Some PPH Requirements in the USPTO

• All the claims in each U.S. application for which a request for participation in the PPH pilot program is made must sufficiently correspond to or be amended to sufficiently correspond to the allowable/patentable claims in the OEE application(s).

• Claims will be considered to sufficiently correspond where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope, or narrower.

• Examination of the U.S. application for which participation in the PPH pilot program is requested has not begun.

• Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings cannot take part.

http://www.uspto.gov/patents/init_events/pph/

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PPH Statistics at a Glance

• Number of petitions as of February 28, 2014:

12 months

Cumulative

Paris-PPH

3,875 15,377

PCT-PPH 4,494 11,313Total 8,369 26,690

PPH Program Growth – New Requests

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Average number of new applications with PPH petitions per month at the USPTO

Program 2010 2011 2012 2013 2014*

Paris-Route 150 186 234 263 296

PCT 63 153 221 294 284

Total 213 339 455 557 580

*2014 Average to date – March 31, 2014

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PPH Statistics at a Glance

Cumulative Applications with PPH Petitions by Month

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PPH Efficiency Benefits

• PPH continues to deliver benefits to the offices and users

• PPH results compared with all cases

Paris-PPH PCT-PPH All Cases

Grant Rate (Allowances/Total Number of Disposals) 82% 87% 53%

First Action Allowance Rate 26% 20% 17%

Actions per Disposal 2.3 1.6 2.6

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PPH Cost Savings Benefits

• Assuming reply/amendment of minimal complexityAverage Cost Savings per Action = $2086

(Source: AIPLA Report of the Economic Survey, 2011)

So—

For each non-PPH application: ($2086/action x 2.6 actions) = $5424 in costs

For a Paris-route PPH application: ($2086 x 2.3 actions) = $4798 $626 SAVINGS

For a PCT-PPH application: ($2086 x 1.6 actions) = $3338 $2086 SAVINGS

• Notes:• Does not include client overhead savings or local law firm fee savings for response to Action• Does not consider fewer RCEs and Appeals (see later slide)• Does not consider Fees/Costs for requesting PPH

Assumes request fees are equal to savings of client overhead• Assumes no government fee (USPTO eliminated fee)• Assumes for foreign applicants that the total local and US attorney costs equal the above average of $2086

per action• Thanks to Hung Bui and Alan Kasper of AIPLA for compiling cost savings data

(Source: AIPLA Report of the Economic Survey, 2011)http://www.buigarcia.com/docs/AIPLA-PPH(HHB).pdf

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PPH Cost Savings Data: Office Actions

• For replies/amendments of relative complexity

Average Cost Savings per Action = $894- $3889

So—

Non-PPH applications:

Min: (2.6 x $2978/action) = $7743

Max: (2.6 x $3889/action) = $10,111

Paris-route PPH applications:

Min: (2.3 x $2978) = $6849

Max: (2.3 x $3889) = $8945 SAVINGS = $894 - $1166/case

PCT-PPH applications:

Min: (1.6 x $2978) = $4765

Max: (1.6 x $3889) = $6222 SAVINGS = $2978 - $3889/case

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PPH Cost Savings Data: After Final

Average Added Cost Savings for RCEs and Appeals from Fees Avoided

• Relevant USPTO Statistics (from prior slide)RCE filing rates: 11% for PPH vs. 31% for non-PPH

Appeal rates: 0.3% for PPH vs. 2.5% for non-PPH

• Applicable USPTO FeesRCEs - $810

Appeals - $1000 ($500 Appeal and $500 Brief) (pre AIA)

• Cost savings – government fees onlyRCEs – on average 20% (31% - 11%) of $810 = $162

Appeals – on average 2.2% (2.5% - 0.3%) of $1000 = $22

Total added savings on average = $184

PPH Quality Benefits

• Analysis of 155 First Action Allowances

– 98% - Examiner recorded a new search

– 84% - Additional art cited

– 40% - Examiner amendment and/or interview

• Serial examination process yields quality, defensible patent rights.

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MOTTAINAI

• MOTTAINAI - Expanded eligibility by de-linking priority• Original Approach:

PPH framework based on unidirectional work flow OFF OSF

• New approach:– Eligibility based on available work from any

participating office on a patent family member, regardless of order of filing

– Gives applicants greater flexibility and increase pool of potentially eligible applications

– OEE OLE

MOTTAINAI Participating Offices:

Pilot began July 15, 2011, now made permanent in most cases

–Australia -Canada -Finland -Japan -Russia -Spain

-United Kingdom -European Patent Office –USPTO

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PPH 2.0

• PPH 2.0 Further simplifies requirements to be more user friendly

• PPH 2.0 retains MOTTAINAI’s expanded eligibility by de-linking priority. Eligibility based on work available from any Participating Office, uses OEE – OLE concept, if the applications in question are members of the same patent family and the disclosures support the claimed subject matter.

• Should lead to further reduced costs for applicants while retaining worksharing benefits for the Offices.

PPH 2.0

• Key improvements are:

– Applicant self-certification of claims correspondence**

– Machine translations of Office actions accepted

– Examiner use of electronic dossier systems, where available, to access the work done in earlier office

Carried over form Mottainai:

– Claim correspondence will be interpreted and applied as agreed to by the PPPH Working Group (Jan 2011)

– Participating Offices must allow at least one opportunity to correct a defect in the PPH request

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PPH 2.0

• EPO and USPTO began the pilot effective January 29, 2012

• USPTO in discussion with other MOTTAINI partners to flexibly implement 2.0 in their offices

• Including Russia, Korea and Germany

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PPH Agreement Offices

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Total Agreement Offices with the USPTO = 27

Global = 17IP5 = 5

PPH 2.0 = 11PCT = 10Paris = 17

Mottainai = 7

* As of March 2014 *

GLOBAL PPH pilot

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Global PPH Pilot

• Global PPH Pilot

– Based on Global PPH Principles drafted by the USPTO

– Test out a common framework based largely on PPH 2.0

– Goals:

• Standardizes PPH program requirements and guidelines across participating offices

• Replace various bilateral agreements in place among the participating PPH offices with a Plurilateral framework

Global PPH pilot

Global PPH Principles– Eligibility based on work available from any participating office, regardless

of OFF/OSF status, so long as the applications share the same effective date (priority or filing)…..

– Participating offices will accept any substantive search and examination product that explicitly indicates the patentability of claims … done by another office under any filing scenario (Paris Convention or as PCT ISA/IPEA).

Common Guidelines

Substantially same for all offices.

Machine translation, electronic dossier, at least one correction.

Simple to JoinLetter to secretariat (UKIPO)

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Global PPH and IP5 PPH

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PCT 20/20

12 proposals developed in cooperation with UKIPO

20/20 reference to the year 2020 goal and clarity of vision

Focus on: Increasing quality; Increasing transparency; Simplification

Presented first to the PCT WG5 in 2012

Document PCT/MIA/21/7 and 9

DATE: JANUARY 15, 2014

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20/20Formal Integration of the PPH into the PCT

• The Patent Prosecution Highway (PPH) has shown that work sharing, or work leveraging, has tangible benefits for both Offices and applicants.

• At the applicant’s option, national and regional Offices be required to fast track (or make special) national phase applications which are presented with only claims which were indicated a s meeting the criteria of PCT Article 33 (2)–(4) by the ISA or IPEA.

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20/20Formal Integration of the PPH into the PCT

• MIA 21:Strong interest by many delegations, but concern by some over:

Accept work from specific rather than all authorities

Perceived national sovereignty issues

–All PPH Offices carry out search and examination according to national laws

–No automatic acceptance of patentability decisions reached by another office

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Information on PPH Programs

USPTO’s Website

http://www.uspto.gov/patents/init_events/pph/index.jsp

 Japan Patent Office’s PPH Portal

http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/patent_highway_e.htm

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Thank you!Paolo Trevisan

paolo.trevisan@uspto.gov