International:

Priming Your Application for Compact Prosecution Abroad: How the PCT-PPH Agreements Impact Searching Authority Selection

By Brent E. Matthias - September 30, 2013

The recent proliferation of Patent Prosecution Highway (PPH) agreements provides a patent applicant with several options for expediting examination of patents filed abroad.

Under the typical PPH arrangement, a favorable opinion on the patentability of at least one claim by an office of first filing (OFF) may be grounds for requesting expedited examination of a counterpart application filed in an office of second filing (OSF). A subset of PPH agreements, known as PCT-PPH agreements, provide PCT applicants similar opportunities to expedite counterpart applications filed outside of the original jurisdiction.

PCT applicants generally have some flexibility in selecting the International Searching Authority (ISA) that will examine the PCT application, and therefore typical factors when selecting the ISA include cost, speed of examination, and competency of the ISA to search the claimed subject matter. With the recent proliferation of PCT-PPH agreements, however, additional care must be taken when selecting the ISA to preserve the expedited PCT-PPH process in all jurisdictions of interest.

A number of ISA options are available to PCT applicants filing with the USPTO as Receiving Office (RO). Specifically, PCT applications filed with the USPTO as RO may designate as the ISA the Australian Patent Office, the European Patent Office, the Federal Service for Intellectual Property (Rospatent), the Korean Intellectual Property Office, and the USPTO. Each of these ISAs operates under a unique set of PCT-PPH agreements which identify the jurisdictions in which expedited examination may be available.

Of the ISAs available to PCT applicants filing with the USPTO as RO, designating the USPTO as ISA yields the greatest number of PCT-PPH options. Currently, the USPTO has PCT-PPH agreements with the Patent Offices of Austria, Australia, Canada, China, the EPO, Spain, Finland, Israel, Japan, South Korea, Russia, and Sweden, as well as the Nordic Patent Institute. The Japanese Patent Office has agreements in place with the same jurisdictions except for Austria, Australia and Canada. At the other end of the spectrum, the European Patent Office currently has PCT-PPH agreements with only Japan Patent Office and the USPTO, and therefore the opportunities for expedited examination when selecting the EPO as ISA are quite limited.

In view of the disparate numbers of PCT-PPH agreements available to the different ISAs, the PCT applicant contemplating numerous filings abroad should consider designating as the ISA either the USPTO or the Japanese Patent Office to preserve the maximum number of jurisdictions in which expedited prosecution may be requested. Other applicants considering a more modest foreign filing program may more heavily weigh other factors, suchascost,speed,qualityofsearch,andcompetency,whenselectingtheISA. Regardless of the number of filings, it is always advisable to consult the current list of available PCT- PPH agreements so that your ISA selection will afford you the possibility of expedited examination in your jurisdictions of interest.

By focusing our practice on patent prosecution, the professionals at Miller, Matthias & Hull LLP keep apprised of patent law developments around the world, and pride themselves on implementing effective and efficient strategies to meet their clients’ needs. We would be happy to help you navigate the prosecution waters both in the U.S. and abroad. For more information, please contact us at (312)977-9902.