What Is the Patent Prosecution Highway?

The Patent Prosecution Highway speeds up the patent application process by allowing different patent offices to share information. The United States Patent and Trademark Office (USPTO) has set up agreements with more than 30 offices in 22 nations. Many patents need approval in different countries. An applicant can get the same information about a patent to any participating country.

How Does the Patent Prosecution Highway Work?

The USPTO reaches out to countries who might want to take part in the sharing process. Anyone who joins the Patent Prosecution Highway can speed up the time needed to get a patent.

The idea is that the patent claims are similar in different countries. The USPTO believes that a patent deemed worthy in other countries deserves a faster ruling than regular patent claims. This is because it won’t need to fill out as much paperwork. Also, the USPTO doesn't need as much information when looking at these patents.

If one foreign office believes that the claim has at least some merit, the Patent Prosecution Highway speeds the application along in other participating nations. Patent officers can work more quickly than usual because they're able to use the same search and examination results that a foreign office used in its ruling. In other words, the Patent Prosecution Highway prevents multiple countries from duplicating the same work.

To start the process, an applicant must receive a written opinion or some form of examination report. The document doesn’t have to include a last ruling. It only needs to say if the application has allowable subject matter. With this document in hand, the applicant can now apply to the USPTO and ask for a faster review of the patent application in the United States.

The government doesn’t rule on these requests immediately. The decision to fast-track the application could take as long as two months. After that, the USPTO may need another three months to judge the application. So, the Patent Prosecution Highway is extremely fast by usual patent ruling standards. In some recent instances, an applicant has received a ruling two weeks or less after filing a request.

Applicants are about twice as likely to win their patent when it goes down the Patent Prosecution Highway. The UPSTO’s track record suggests that these applications have double the regular allowance rate.

Who Participates in the Patent Prosecution Highway?

The primary participants in the IP5 Patent Prosecution Highway are the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), the Chinese Patent Office (SIPO), and the Korean Intellectual Property Office (KIPO).

The current version of this program is the IP5 Patent Prosecution Highway. Previous versions of the Patent Prosecution Highway had time limits. The current one debuted in 2014 and had a three-year time limit. In 2016, the main participants agreed to extend its lifespan through 2019.

Oddly, the Patent Prosecution Highway isn’t used often. As of 2011, only 6,657 applicants had acquired this status.

Who Is Eligible for the Patent Prosecution Highway?

To be eligible for the Patent Prosecution Highway, applicants must meet these requirements:

  • The application in the United States must have the same earliest filing date or priority date as the one in the other Patent Prosecution Highway office.
  • The patent application must have at least claim that a participating officer has ruled is patentable or allowable.
  • All claims to the USPTO must tie back to the claim in a foreign office.
  • The USPTO cannot have started a review of the patent prior to the Patent Prosecution Highway request.

How Does the USPTO Decide What’s Allowable?

Patent officers use the term “sufficiently correspond” to decide what’s allowable. They think of any claim of the same or similar scope as sufficiently corresponding to the American patent application. What they really mean is that the claims are almost identical.

In other words, the applicant must present two similar patent applications in the United States and a country that participates in the Patent Prosecution Highway. The first ruling in the foreign country must offer a favorable ruling, or an office action. Otherwise, it won’t qualify for the Patent Prosecution Highway.

Sometimes, the American application will have a smaller scope than the foreign one. That’s perfectly fine as long as it’s based on the larger claim of the application that is almost identical. On the other hand, a person cannot add a wider scope to a patent request in the United States. If they want to apply for the Patent Prosecution Highway, the patent request must have similar ideas.

What Documents Does an Applicant Need to Apply for the Patent Prosecution Highway?

The USPTO requires the following documents for Patent Prosecution Highway applications:

  • A participation request for the Patent Prosecution Highway.
  • A request to advance the application ahead of non-qualifying patents through rule 37 CFR 1.102(a).
  • A claims document written in English that shows how the USPTO is almost identical to the foreign office patent.
  • A translated copy of the office action ruling from the foreign participant in the Patent Prosecution Highway.
  • Information disclosure statement that notes all documents used in the office action.

What Happens after a Person Applies for the Patent Prosecution Highway?

The steps for participation in the Patent Prosecution Highway are:

  • The USPTO tells the applicant that they’re accepted or denied.
  • If accepted, the applicant advances ahead of other patent applicants in line.
  • If denied, the applicant gets one chance to discuss the defects in the patent and reply with a perfected request.

Assuming that the government rules in favor of the applicant, the person receives special status. Anyone who wins should get a ruling within the year. Otherwise, the government will tell the applicant that they didn’t get a spot on the Patent Prosecution Highway.

Anyone seeking a patent should try to get on the Patent Prosecution Highway. After all, it is free to apply. To increase your odds of obtaining a patent, post your job on Upcounsel. The best patent lawyers can help you fill out the paperwork properly and answer any legal questions.