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Use the Patent Prosecution Highway to Save Time and Money

The Patent Prosecution Highway (PPH) is a successful work sharing initiative between the USPTO and partner foreign patent offices (currently 21 partner offices). The PPH allows for the sharing of information between patent offices in various countries to accelerate examination of patent applications for patent applicants seeking global coverage. By utilizing the PPH, applicants can obtain patent coverage across the globe faster and at substantial cost savings.

According to the USPTO, more than 9,000 applications have been processed under the PPH program as of the end of 2011. It has been reported that applicants can save anywhere from $2,000 to $13,000 in prosecution costs per application through the PPH, depending on the complexity of the invention. Thus, international filers seeking patent protection in several different countries can realize substantial savings under the PPH. Moreover, the USPTO charges no fee for requesting accelerated examination under the PPH.

Under PPH, an applicant usually files a patent application in its home country, and then files additional applications in other countries claiming priority to the first-filed application. Once a claim in the originally-filed application is found allowable by the office-of-first-filing, the applicant can request patent offices of subsequently filed applications to accelerate examination under the PPH. Further, an applicant who files a PCT application first and receives a positive written opinion or international preliminary examination report indicating that at least one claim meets the novelty, inventive step and industrial applicability requirements can request fast track examination of their corresponding applications in participating offices under the PPH.

We have requested accelerated examination under the PPH in the US for several applications with claims found allowable by the Korean Patent Office or applications for which positive international preliminary examination reports were issued by the Korean Patent Office. Overall, the PPH process went quickly and painlessly. In one case, we received a notice of allowance in about six months from the filing the PPH request.

Better yet, the USPTO is continuously working to improve the PPH program. The USPTO recently announced that it will begin PPH 2.0 at the end of January to reduce the paperwork requirements in order to provide the applicants with more savings and to further reduce the processing time. Further, the USPTO will begin testing a new streamlined PPH model in July, which will eliminate the current office-of-first filing to office-of-second filing directional requirement. That is, applicants will be able to request accelerated examination under the PPH based on allowable claims from any participating office, even if that office is not the office where the applicant first filed the application.

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