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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
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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
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 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
• 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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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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