USPTO Experiences with the
Patent Prosecution Highway
(PPH)
Paolo Trevisan
Patent Attorney
Office of Policy and International Affairs
United States Patent and Trademark Office
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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
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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
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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:
Paris-PPH
PCT-PPH
Total
12 months Cumulative
3,875
15,377
4,494
11,313
8,369
26,690
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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
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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%
2.3
1.6
2.6
Actions per Disposal
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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:
•
•
•
•
•
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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
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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
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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.
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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
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 *
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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
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