WHAT IS THE PATENT PROSECUTION HIGHWAY?

Core requirements are common to each PPH agreement, although there are exceptions and intricacies that you may need to consider. 

The core requirements generally are:

• The second application at the second office must have a “corresponding” first application at the first office. What constitutes a “corresponding” application varies from agreement to agreement. 
• At least one claim in each first application must have been indicated as being allowable by the first office. 
• Each of the second application’s claims must ‘sufficiently correspond’ to one of the claims indicated by the first office as being allowable in the first application. 
• Examination by the second office must not have begun.
• Participation in the PPH program must be requested. Most offices provide a form to submit for this.
• Copies of each official action (of relevance to patentability) issued by the first office must be submitted to the second office.
• Copies of each non-patent document cited in the prosecution by the first office must be submitted to the second office.

Intricacies of some agreements include:

• Translations of the allowable claims and official actions are sometimes required.
• Translations of cited documents may be requested by the second office.
• At the USPTO, applicants must also submit copies of all non-US patent citations.
• At the USPTO, applicants must also submit official actions relevant to patentability which issue after the one indicating allowability.
• At the USPTO, continuation applications do not ‘inherit’ the PPH status of their parent.
• When the PPH request is based on the Written Opinion of the International Searching Authority (WOISA) or the International Preliminary Examination Report (IPER), the applicant can submit amendments or arguments in an attempt to overcome any objections noted in Box VIII (“certain observations on the international application” – typographical errors, clarity and so on).
• Offices may charge a fee for using the PPH scheme.

It is a good idea to ensure that you check the requirements set out in each particular agreement before using the PPH under that agreement due to the exceptions that need to be considered. 

Several offices give the applicant a single opportunity to correct any issues in their PPH request. Those offices also note that examinations will not be suspended or put off to allow time for the PPH request to be corrected. The PPH can be applied for as many times as is requested, as long as the above requirements are met. Accordingly, refusal of a PPH request is not necessarily fatal to using the PPH.