Patent Prosecution Highway - Much ado about nothing?

Published on: 16 May 2014
by Dr. Malte Köllner, Head of Dennemeyer Foreign Filing & Dr. Markus Rieck, Patent Attorney, Fuchs Patentanwälte

By implementing a Patent Prosecution Highway (PPH) program, patent offices aim to avoid duplication of effort – which is good. Basically, if a patent application has been positively examined by the patent office of country A, this result can be brought to the attention of the patent office of country B, if the latter has promised to take such a result into account in the framework of a PPH program based on a contract between patent office A and B.

For the patent applicant this sounds like a good idea. The positive examination result of patent office A will be used by patent office B, thus the duration of patent granting, as well as the costs, are reduced. That is the theory anyway.

However, patent office B does not have to follow the positive examination result of patent office A. It can follow it, but may also come to a different conclusion. Or come to the same conclusion, but only after a few material office actions. So, is there a positive practical effect of such programs or not? Let’s try to find out.

Existing PPH programs

It all started in 2006 with the first PPH agreement between the Japanese Patent Office and the US Patent Office. Since then, a large number of PPH programs have been signed between different patent offices. The PPH portal site of the Japan Patent Office provides a good overview. There are currently six different types of PPH programs and related agreements:

  • Classic PPH,
  • PPH Mottainai,
  • PPH 2.0,
  • PCT (Patent Cooperation Treaty)-PPH,
  • Global PPH (a recent addition), and
  • IP5 PPH.

To read the full article, please view the PDF attached (as published in The Patent Lawyer magazine).