America-Israel Patent Law Blog

Over the last several years, the USPTO has entered into a number of bilateral agreements under the rubric of what it calls “The Patent Prosecution Highway” (PPH).  The general idea is to reduce the overall examination workload at participating patent offices.  For example, if someone first files an application at the UK patent office and obtains a favorable examination report there, he may use that favorable report as a basis for expediting examination of a U.S. application that claims priority from the UK application.  Under the PPH, rather than waiting in the examination queue in accordance with its filing date, the U.S. application will be moved near the front of the line.  Although the USPTO will still conduct its own examination of a PPH-advanced application, anecdotal evidence suggests that US examiners will be more likely to find allowable claims in PPH applications than non-PPH applications. 

Unfortunately, in its bilateral form, the PPH is of somewhat limited utility.  For starters, participation in the PPH in its bilateral form has somewhat onerous requirements that render the vast majority of applications PPH-ineligible.  This is partly due to the fact that PPH in its bilateral form is based on the somewhat anachronistic model that a citizen of country A will file first in country A and then later file in country B, claiming Paris convention priority from the application in country A. 

Furthermore, while in theory PPH agreements are bi-directional, in practice this is may not be so when one patent office conducts examination more quickly than the other.  To illustrate, although a favorable examination report in a first-filed U.S. application can be used to advance prosecution in the UK, this is unlikely to happen, both because the UKPO conducts examination more quickly than the USPTO, and because most US applicants are likely to enter the UK via the EPO. 

In any event, other offices with which the USPTO has established bilateral PPH agreements are the EPO and the patent offices of Japan, Korea, Australia, Austria, Canada, Finland, Germany, Hungary, Russia, Singapore and Spain.

Where the PPH is really useful is in the context of the PCT.  The US has PCT-PPH agreements with Austria, Japan, Korea, Russia, Spain and the EPO.  Whereas a US-based applicant whose UK application claims priority from a US provisional cannot avail himself of a favorable UK examination report to get his US non-provisional fast-tracked under the PPH, if that applicant files a PCT application claiming priority from his US provisional, has his search done at, say, the EPO or KIPO, and receives a favorable WOISA or IPRP, he can use WOISA or IPRP as basis for entering the PPH.  Moreover, according to Carol Bidwell of WIPO, figures to date indicate that US applications filed under the PCT-PPH program have an extremely high allowance rate, and are allowed very quickly.  Obviously, this makes PCT-PPH a very attractive option for applicants who want US examination to proceed quickly.

Last year the Israel PTO announced that it was being given the opportunity to become a PCT search authority.  In past posts I have argued that although the extending of this opportunity is nice feather in the ILPTO’s cap, the real goal should be to become a PCT search authority recognized by the USPTO. Because the ILPTO will likely charge significantly less than the EPO or the USPTO for PCT searches, becoming a US-recognized PCT search authority could result in an influx of search fees to the ILPTO, while lowering the cost of the PCT process for US- and Israel-based applicants.

Rumor now has it that the ILPTO and USPTO have agreed for the ILPTO to join the PPH; I’ll believe this when I see it, i.e. when an official announcement is made by the ILPTO and/or the USPTO themselves.  Even if the rumor is true, it’s unclear that Israel’s joining the PPH would have much immediate impact.  Straight-up bilateral PPH would only benefit those Israeli applicants who first file in Israel, then file in the USA claiming priority from the Israel application, then receive a favorable examination report from the ILPTO before the USPTO issues a first OA.  That’s a set of circumstances that simply won’t apply to most Israeli applicants.  Conversely, for US applicants who file in Israel, the issuance of a Notice of Allowance in the USA will often occur before examination is completed in Israel, and may serve as the basis for allowance of the Israel application under 17(c) of the Israel patent statute.  Why invoke the PPH to merely expedite examination when you can gain allowance straight away?

Furthermore, in many cases, the signing of a PPH agreement with the USA would not provide Israeli applicants with any benefits beyond what they already enjoy.  This is because, presently, Israeli applicants can take advantage of the PCT-PPH system: many, if not most, Israeli applicants file U.S. provisional applications as their first filings, then file a PCT claiming priority from the provisional.  Since Israelis must use the USPTO or EPO for PCT search and examination, a favorable WOISA or IPRP at the EPO will facilitate use of the PPH upon entry into the national phase in the USA. 

What would be good about the signing of a PPH agreement is that it would constitute a first step toward becoming a PCT-PPH search authority.  Obviously, even if Israel soon joins the PPH, and even if Israel becomes a PCT search authority (a development expected sometime in 2011), the ILPTO will need to prove its mettle as a PCT search authority before the US will be willing to recognize it as a PCT-PPH office.  But if the ILPTO can eventually join the ranks of PCT-PPH patent offices, that would be a boon for both the ILPTO and US-based applicants.