USPTO Experiences with the Patent Prosecution Highway (PPH) .USPTO Experiences with the Patent...

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  • 1

    USPTO Experiences with the

    Patent Prosecution Highway


    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


  • 3

    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


    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


  • 5

    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

  • 6

    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


  • 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.


  • 9

    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 11,313

    Total 8,369 26,690

  • PPH Program Growth New Requests


    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

  • 11

    PPH Statistics at a Glance

    Cumulative Applications with PPH Petitions by Month

  • 12

    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

  • 13

    PPH Cost Savings Benefits

    Assuming reply/amendment of minimal complexity

    Average Cost Savings per Action = $2086

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


    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


    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)

  • 14

    PPH Cost Savings Data: Office Actions

    For replies/amendments of relative complexity

    Average Cost Savings per Action = $894- $3889


    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

  • 15

    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 Fees

    RCEs - $810

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

    Cost savings government fees only

    RCEs 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.


  • 17


    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


  • 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


  • 19

    PPH 2.0

    PPH 2.0 Further simplifies requirements to be more user friendly

    PPH 2.0 retains MOTTAINAIs 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


  • 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


    Including Russia, Korea and Germany


  • PPH Agreement Offices


    Total Agreement Offices

    with the USPTO = 27

    Global = 17

    IP5 = 5

    PPH 2.0 = 11

    PCT = 10

    Paris = 17

    Mottainai = 7

    * As of March 2014 *

  • GLOBAL PPH pilot


  • Global PPH Pilot

    Global PPH Pilot

    Based on Global PPH Principles drafted by the


    Test out a common framework based largely on

    PPH 2.0


    Standardizes PPH program requirements and

    guidelines across participating offices

    Replace various bilateral agreements in place among

    the participating PPH offices with a Plurilateral


  • 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 Join

    Letter to secretariat (UKIPO)


  • Global PPH and IP5 PPH


  • PCT 20/20

    12 proposals developed in cooperation with UKIPO

    20/20 reference to the ye