The patent prosecution highway (PPH) was launched in 2008 as a set of cooperation agreements between participating patent offices in various countries of the world. The aim of PPH is to accelerate the patent prosecution process by sharing work product between patent offices that have a PPH agreement between them with the two-fold benefit of quicker grant for applicants and a reduction in workload of participating patent offices. Up to now, these agreements have been almost entirely bilateral, and have perhaps not yet led to the envisaged benefits. Is this set to change?
On 24 September 2013 the first five-way PPH was announced between the world’s five largest patent offices, which between them grant 85% of the world’s patents. These are the so-called IP5 patent offices comprising: the European Patent Office, the US Patent and Trademark Office, the Japanese Patent Office, the Korean Intellectual Property Office and the State Intellectual Property Office in China.
The IP5 PPH is a pilot programme that will begin in January 2014. The intention is that the programme will utilise “both PCT [international patent application] and national work products and will improve the accelerated treatment of patent applications”. “Under the programme, applicants whose patent claims [that define the scope of protection] have been found to be patentable by one office may ask for accelerated processing of their corresponding applications pending before the other IP5 offices. Moreover, in carrying out the task the offices concerned will also exploit already existing work results to the extent practicable. Requests to use the PPH can be filed with any of the IP5 Offices both on the basis of PCT as well as national work products established by the IP5.”
An international patent application is a unified procedure for filing patent applications in each of its contracting states (most countries). While some work is carried out in searching and examining an international patent application, it is common that national or regional patent offices carry out their own examination before issuing a patent in their jurisdiction. As a result, an international patent application is often considered a means to delay the choice of jurisdiction in which to seek patent protection. There is not yet an international patent that gives protection throughout the world.
IP5 PPH may, perhaps, be a step towards a truly international patent application. For example, it may be possible that under this programme a positive view on patentability issued in the international phase of an international patent application may lead to quick grant of patents with the same claims in all of the IP5 patent offices. However, the extent by which the participating patent offices take notice of other’s work product and take the same view on patentability is not known. If we do see a view on patentability being shared between patent offices, then we may at last see patents quickly granted in the IP5 patent offices with consistent claims across all the patent offices. This would result in more certainty for all stakeholders (both patent applicants and third parties) as well as a reduction in costs for applicants and work load for patent offices.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.