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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 11,313

Total 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 complexity

Average 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 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.

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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 = 17

IP5 = 5

PPH 2.0 = 11

PCT = 10

Paris = 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 Join

Letter 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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20/20

Formal 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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20/20

Formal 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/in

dex.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