The United States Patent and Trademark Office (USPTO) enters into patent worksharing arrangements with foreign intellectual property (IP) offices to improve patent examination efficiency and facilitate cooperation within the global patent system. Patent worksharing permits IP offices to collaborate in the examination of commonly filed patent applications. These are typically associated through a claim of foreign priority under an international framework, such as the Paris Convention or the Patent Cooperation Treaty (PCT).
A number of patent filing trends motivate many IP offices to enter into patent worksharing arrangements. These include an ever-increasing rate of patent application filings, an exponential growth in the body of prior art available, a growing complexity of new technologies, and limited IP office resources. Further, global patenting strategies have led innovators and businesses to increasingly file common patent applications across a number IP offices.
Historically, the IP5 offices—a forum of the world’s five largest IP offices—have led worksharing efforts, as they account for the majority of the world’s patent applications. However, other jurisdictions are emerging as innovation hubs in cutting-edge technologies, are becoming essential components of global supply chains, or are drawing foreign investment from global businesses. The increasing relevance of these jurisdictions is driving an increased number of patent application filings beyond the largest offices, leading to redundant filings across many IP offices.
Patent worksharing reduces many of the inefficiencies that IP offices experience when repeating each other’s work. The inter-office collaboration made possible by patent worksharing also leads to higher-quality patents and the timelier issuance of patent rights. The benefits of worksharing can be especially significant when the offices involved have different capabilities and strengths that can be leveraged by each other. This can come in the form of accessibility to prior art in different languages or even IT resources and tools.
The USPTO has various patent worksharing arrangements, including the Patent Prosecution Highway, the Parallel Patent Grant, and others.
Patent Prosecution Highway
The Patent Prosecution Highway (PPH) is an applicant-driven patent worksharing arrangement between two or more IP offices. PPH arrangements allow an applicant that has received a favorable decision from a first participating IP office to request fast-track examination of a corresponding patent application that is pending in a second participating IP office. The USPTO is party to various bilateral and multilateral PPH arrangements, most notably the Global and IP5 PPH arrangements. For more information, see the USPTO’s PPH webpage.
Parallel Patent Grant
The Parallel Patent Grant (PPG) is a new office-driven patent worksharing arrangement for expediting the grant of a foreign patent based on an issued U.S. counterpart patent. It combines elements of the PPH with a patent validation system. The PPG is designed to allow another IP office to specifically leverage USPTO work product at a desired scale. Currently, the PPG is a pilot project between the USPTO and the Mexican Institute for Industrial Property (IMPI).
Other patent worksharing programs
- Patent validation: Validation arrangements expedite the grant of a foreign patent based almost exclusively on an issued patent from a first jurisdiction. Sometimes, these arrangements extend the scope of a foreign patent by extending its legal effect to a domestic jurisdiction (certification). The USPTO has entered into a validation arrangement with the IP office of Cambodia.
- PCT Collaborative Search and Examination Pilot (CS&E): The CS&E is a pilot program that allows examiners from the IP5 offices (in their capacity as PCT International Authorities) to collaborate on the search and examination of a single international application. The result is an international search report (ISR) and written opinion (WO) from the chosen International Searching Authority (ISA) based on contributions from all participating offices. For more information on this worksharing arrangement, visit the USPTO’s CS&E webpage.
- Expanded Collaborative Search Pilot (CSP): The expanded CSP provides applicants with search results from multiple offices early in the examination process for common patent applications. It is designed to accelerate examination and provide applicants with more comprehensive prior art by combining the search expertise of examiners at the USPTO, the Japan Patent Office, and/or the Korean Intellectual Property Office before issuing a first office action. For more information on this worksharing arrangement, visit the USPTO’s CSP webpage.