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The Patent Prosecution Highway—Scaling a Sensible Approach to Worksharing
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
In recent years, the Patent Prosecution Highway (PPH) has proven to be one of the most significant worksharing initiatives for the USPTO, and a successful vehicle enabling faster and less expensive multi-country patent prosecution for the IP community. It began as a very small pilot project in 2006 between the USPTO and the Japan Patent Office and grew modestly over the next three years, as international filers became more comfortable with this new process for quickly obtaining patent rights across the globe. As the project has grown, getting the word out about the substantial benefits of PPH has been one of our highest priorities.
As of the end of 2011, more than 9,000 applications at the USPTO have been processed within the PPH program. This represents a 100%+ increase in usage, two years running. Users benefit not only by fast portfolio-building but also by enjoying the collective savings of millions of dollars in the process. A recent study by our user community demonstrated that—in a single application—anywhere from $2,000 to $13,000 in reduced prosecution costs can be realized through PPH, depending on the complexity of the invention. For international filers of all sizes, that level of savings adds up quickly.
And even while the PPH has grown tremendously in usage, we’ve continued the mission, working with our partner offices—which now total 21—to further improve the program. One of the first major steps taken was expansion of the PPH into the PCT system. This has opened up the advantages of PPH to an entire sector of international filers, and also paved the way for making the PCT system the worksharing model it was originally intended to be.
Recently, we reached agreement with several other large offices to streamline the PPH entry process and open the system to yet many more filers, mainly in Europe. In July we began testing the elimination of the office-of-first-filing to office-of-second-filing directional requirement of the PPH model. Under this more flexible on-ramp approach, PPH may be entered on the basis of positive outcomes from an office which first indicates allowable subject matter, whether or not that office happened to be the office of first filing. This improvement is known as the “Mottainai” PPH model. Mottainai is a Japanese term meaning that something useful should not be left unused. For our European constituents, this means that work done by the EPO (as an office of second filing) will be available as a basis for PPH entry both here and in Japan.
At the end of January, we will begin what we call PPH 2.0, which reduces the paperwork requirements by cutting documentation, allowing for use of machine translations for some purposes, and allowing for self-certification of claims correspondence. PPH2.0 will save participants even more money, while further reducing the processing time here at USPTO. Details on the Mottainai and PPH 2.0 pilots can be found on our website.
Finally, we are working with all PPH offices to realize a common set of fundamental requirements—“one PPH”—intended to vastly simplify the process for all users by creating a single, universal set of rules for the program globally.
The Patent Prosecution Highway is a growing success story—but only for those who are using it. Your competitors are taking advantage of the major cost savings and many other plusses of the program. So much so, that we are expecting another doubling of the program for 2012. If you aren’t yet using PPH, we invite you to take a fresh look at how it can be a positive contributor in both speed and cost to your international patent protection strategy.