| Good day and thank you for the opportunity to share some information about the USPTO's Patent Prosecution Highway or PPH program. My name is Jessica Patterson and I am the Senior Advisor and Director for International Work Sharing at the USPTO. | Patent Prosecution Highway. United States Patent and Trademark Office – USPTO. Jessica Patterson, Senior Advisor and Director for International Worksharing. |
| PPH is one of the most well-known work sharing initiatives. It improves examination efficiency by reducing duplicate efforts and it provides applicants with fast-track processing of corresponding claims in applications pending in another office once they've received a determination of allowable claims in an application at a first office. | What is PPH? - A system of work sharing that improves examination efficiency by reducing duplication of effort among patent offices. - Enables an applicant who has received a determination of allowable claims in an application from one office (National Stage of PCT) to obtain fast track processing of corresponding claims in application pending in other offices. - Originally proposed by the JPO. |
The way in which PPH works is that once an applicant receives a positive examination result from one PPH participating office, such as a patent grant or indication of a claim being allowable, the applicant can then file a PPH request in a corresponding application at another PPH participating office. Once that request is granted, the examination of the application in the second office is expedited. There are some exclusions to participating in PPH. For example, provisional, plant, design, and reissue applications are excluded, as well as re-exam proceedings and applications subject to a secrecy order. | First, the applicant receives a positive examination result from a PPH participating office. - A national/regional office action indicating allowable claims
- Patent Cooperation Treaty (PCT) Written Opinion or PCT International Preliminary Report on Patentability
Applicant then files a PPH request in a corresponding application in another PPH participating office. Once the PPH request is granted, the examination of the application in the second office is expedited. |
| Requesting accelerated examination under the PPH at the USPTO requires applicants to submit a PPH petition form and include all required documents, as well as a claims correspondence table. In addition, all the claims in the US application must sufficiently correspond to the patentable or allowable claims from the application in the Office of Earlier Examination. | 1/ Required documents - A copy of the most recent office action prior to the decision to grant a patent or the most recent PCT work product (along with an English translation)
- An information disclosure statement listing the documents cited in the Office of Earlier Examination (OEE) work product
- Copies of all cited documents (except for U.S. patents or U.S. patent application publications)
2/ Claims correspondence table 3/ All the claims in the U.S. application sufficiently correspond to the patentable/allowable claims in the OEE application. |
One of the most popular benefits of PPH is acceleration. At the USPTO, PPH applications are given special status and are taken out of turn for examination, thus reducing the time to receive office actions or patent grants. PPH also provides improved search and examination quality as it allows for the second office to leverage the work done at the first office and build upon it. One example we like to provide is that JPO examiners are much better at searching Japanese art than a USPTO examiner. And when the USPTO examiner uses the JPO search results, it provides a much more thorough examination. The same will be true with INPI examiners searching French art. Another PPH benefit is pendency reductions. Not only are applicants receiving office actions and grants much more quickly than regular examination, but the efficiencies that are gained from PPH in general help offices reduce overall application backlogs. | - Special status: PPH applications are advanced out of turn for examination, reducing the amount of time to receive Office actions and patents. - Improved search and examination quality: search results are shared among IP Offices. For example, a JPO examiner is normally more adept than a US examiner at searching Japanese art. The JPO search results are used by the US examiner to produce a more thorough examination. - Reduced overall pendency: the efficiencies gained by worksharing help IP Offices reduce the overall application backlog, which affects all applications. |
At the USPTO, we currently have PPH agreements with 36 offices, noting that there are a total of 55 offices worldwide participating in PPH. Of the USPTO's agreement, 27 are global or IP5 agreements, and nine are bilateral agreements. At the end of 2020, there have been over 3 million PPH applications globally since PPH began. And since the USPTO began participating in PPH, we have received over 77,000 applications with PPH petitions. On average, we receive approximately 500 per month and 6,000 each year. | Agreement offices with the USPTO (as of 03/31/2022). - Worldwide = 36 offices (55 offices worldwide)
- Global/IP5 = 27 offices
- Bilateral agreements = 9 offices (France is a newly added Office).
At the end of 2020, a total of 3,276,700 applications worldwide/* The applications from 29 GPPH/IP5 Offices account for 3,021,088 of those applications or 92.2%.* (*based on WIPO IP Statistics Data Center, the 2020 numbers are the latest ones available) |
| Here is a quick look at some of our statistics comparing PPH and non-PPH prosecution at the USPTO. As you can see, the percentage of applications with at least one RCE, overall appeal rates, and the percentage of applications with at least one continuation is lower for PPH applications compared to non-PPH applications. And both the overall allowance rate and the first action allowance rate are much higher for PPH applications than non-PPH applications, which is a result of the claims having been narrowed in scope during examination at the first office. | PPH Applications - Percent of application with at least one RCE*: 24%
- Appeal rates*: 1.6%
- Overall allowance rate: 87%
- First action allowance rate: 27%
- Percent of applications with at least one continuation: 16%
Non-PPH applications - Percent of application with at least one RCE*: 28%
- Appeal rates*: 1.9%
- Overall allowance rate: 77%
- First action allowance rate: 14%
- Percent of applications with at least one continuation: 20%
Examiner actions include restrictions, non-final rejection, final rejection, ex parte Quayle, allowance, interference, SIR disposal, Rule 105 requirement, examiner’s answer, advisory action, miscellaneous action with SSP, first action interview actions, examiner initiated suspension and abandonment after PTAB decision. *RCE/Appeal rates – Cases completed between April, 2020 to March, 2021. **First action allowance rate – Data is from October, 2020 through September, 2021. |
I would encourage you to learn more about PPH at the USPTO by going to our PPH website. We provide information on PPH in general, as well as information on all the PPH agreements that we have. You can download the PPH request form there as well. | USPTO’s PPH website – https://www.uspto.gov/pph - Learn more about PPH
- Download the PPH request form.
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| Finally, here is some contact information that may be helpful to you, as well as my contact information if you have any questions or would like any additional information. Thank you very much. | For specific questions about the PPH petition form or process, send an e-mail to pphfeedback@uspto.gov Electronic filing support is available through the Patent Electronic Business Center (EBC) at +1-866-217-9197 (toll-free) or +1-571-272-4100 from 6 a.m. to 12 Midnight Eastern Time, Monday to Friday, or by e-mail to ebc@uspto.gov Jessica Patterson Senior Advisor and Director for International Worksharing +1-571-272-8828 Jessica.patterson@uspto.gov |