Is It Worth Going For A Long Drive On A Patent Prosecution Highway?

Saransh Chaturvedi

17 Sep 2020 8:41 AM GMT

  • Is It Worth Going For A Long Drive On A Patent Prosecution Highway?

    The advent of information technology does help the world to get closer to each other. These mutual interconnections have invariably solved various contentious problems that would otherwise be difficult to address. The intellectual property regime is witnessing a constant increase in the pressure of disposing various applications that have been filed at various domestic offices...

    The advent of information technology does help the world to get closer to each other. These mutual interconnections have invariably solved various contentious problems that would otherwise be difficult to address. The intellectual property regime is witnessing a constant increase in the pressure of disposing various applications that have been filed at various domestic offices across the world. The intellectual property, consist in them an economic value which increases its stake. Nevertheless, in spite of it being at the priority, the average time taken to grant a patent is roughly 25-30 months. This shows the pressure on the part of the patent office regarding the conduct of examination and others process required. Seeing this, various initiatives have been advocated at the global level to shorten the period of granting patent. One such initiative being very famous is that of patent cooperation treaty (PCT). The PCT process does help the applicant in seeking the patent protection internationally and assist the patent office with their decision by providing the valid information regarding examination and search reports.

    But to this, another very important development of the recent times is that of Patent Prosecution Highway (PPH) developed by United States Patent and Trademark Office (USPTO). This concept primarily works on the premise on having a bilateral linkage of two patent offices to alleviate the burden of work. Through this the second patent office take advantage of the work that has already been completed in the first patent office. This helps in reducing the burden on the patent office and moreover it allows an expedited patent examination in a second patent office when a corresponding claim has already found patentable in the first office. This way the second patent office needs not to undergo repetition of search and examination resulting in an expedited process. The first patent office is generally known as office of earlier examination (OEE) or Office of First Filing (OFF) and the second patent office is called as office of later examination (OLE) or Office of Second Filing (OSF). The first PPH was developed between USPTO and Japan Patent office as a pilot program that began on July 3, 2006, which was implemented on a full time and permanent basis on January 4, 2008.

    Requirements under USPTO

    Talking especially about USPTO, one can get the idea of PPH works. Not all applications are eligible to enter US through PPH to which USPTO gives several requirement for the applicants. It specifically bars those applicants to enter through PPH route where a substantive examination of the application has already been started. By substantive examination, it means that where the examiner have started the first action on the merit and not a mere notice of a missing part. The application filed in US must be sufficiently related to the application in the OEE. There should be at least one claim that should correspond to OEE application and all claims mentioned must "sufficiently corresponds" to the allowable or patentable claims in the OEE. Moreover the filing date of the US application demanding the PPH route must also correspond to that of the filing date in the OEE. The literal interpretation of "sufficiently corresponds" is to consider same or similar scope as an allowable or patentable claim. This can bring us to analyze that the claims which have to be addressed in the OLE must be similar to OEE. This is much obvious since if there are other claims then the purpose of PPH won't be solved. The aim is to take the work that has been already been completed by the OEE. Hence only those claims on which the work has been sufficiently rendered by OEE will be allowed to go for PPH. Here it is imperative to understand that same or similar scope must not be confused with those claims which introduce a new or different category of claims. Meaning thereby, if a claim in OEE correspond to process of manufacturing but the claim in OLE correspond to product, even if both are of same category will not be considered as sufficiently correspond.

    Will PPH be worthwhile?

    Well an opaque analysis does seem to put PPH applicants in an advantageous position for the purpose of an expedited examination. But there are various issues which seem to be unaddressed. There were various PPH being entered by USPTO with countries like UK, Canada, Korea, Australia, European patent office, Denmark etc. On a close analysis there is a difference in the participation requirement for the PPH for each country. Like for example, Japan requires the copies of the USPTO cited references but UK does not require that. Instead it requires submission of search and examination reports of USPTO. Canada requires that the application even of PPH must be made open to public. Korea was the first country among PPH participants which does not restrict participation to those applications that have not yet started the examination. These different requirements prove an uneven arrangement among the countries with the PPH.

    Another major issue that comes up is the difference in the ambit of allowable claims in the individual country. All the claims in the OLE must be limited to the scope of claims allowed in OEE. An applicant who has preferred a broader scope of claims might not be able to get through the PPH subject to varying patent laws applicable in the respective country. Moreover taking PPH route might be more costly to the applicant due to various filing requirement involving specific documents, writing letters and filing petition.

    One of the major reasons why not to choose the PPH route is the country specific alternative procedure already available in the respective country under their local patent law. Almost all the country does have some or the other procedure whereby it provides the applicant an option to speed up the examination process, if it is necessary. Canada has a Special Order Request whereby the applicant can request an urgent examination, failure to which will result in prejudice to the person's rights. Under Section of the Australian Patent Manual of Practice, the applicant can request an expedited examination with a legitimate reason. European Patent Office has a program called PACE in which it allows the applicant to have all examination and communication within tight deadline. Section 17.05.1 of UK Manual of Patent Practice too provides the applicant to get an accelerated search if adequate reason is being provided.

    If such an accelerated examination procedure is being given, it's highly imperative to think why one should go to PPH and incur extra cost. On the contrary, one has to understand is that in every expedited examination request the applicant also needs to justify as to why he wants the same. And many applicants are content to let the examination proceed at a leisurely pace for various reasons. Many stakeholders argue the presence of PPH as parasitic to PCT. But one has to understand that even in the PCT system; the members do not have an opportunity to evaluate the claims that result from prosecution in partner states. This generally results in being distrustful of other's countries' examination procedure. Contrary to what happen in PPH, there always is an understanding between OLE and OEE, resulting in the development of trust in one's other patentability decision. On the contrary, it can even be said that PPH fills the gap of PCT.

    Taking a long drive on PPH

    Since the advent of PPH, it has grown altogether. In a latest move, Intellectual Property office of Singapore and National Institute of Industrial Property of Brazil has launched a pilot PPH program from 1st May 2020. The Indian Union Cabinet in 2019, too, approved the proposal to enter it first pilot PPH program for three years with Japanese patent office as it first PPH program. As per the statistics in 2019, the USPTO allowance rate for applications that entered the PPH was 84%, as compared to allowance rate across all patent application which were 74%. In a move to bring this for a global consideration, USPTO launched two pilot programs- Global PPH and IP5 PPH in 2014. It specified that both will run concurrently and are substantially identical and the PPH request may be filed based on the work of any office participating in either pilot program. Through this program even the opinion of International Searching authority and International Preliminary Examining Authority issued within the PCT framework are allowed to be submitted for PPH only if the participating office has been the part of examining under PCT. Currently the Global PPH have 27 countries and IP5 have 5 countries as on June 2020. But on the other hand a report shows that from 2006 till 2018 fiscal year end, relatively fewer PPH request have been filed at USPTO. Approximately 55,000 PPH request has been filed at USPTO, while the total number of utility patent application filed in the same period is 6,824,912. This is because of some reason like high cost and applicant not allowed filing any further amendment which has been subsequently filed with PPH request. These things must be learned and rectified by countries which are planning to enter the PPH in the near future.

    As a part of its success, it is highly imperative to see how PPH program could benefit the developing countries in the wake of its disadvantages discussed above. Undoubtedly, it helps in having a quicker examination as opposed to the regular long process, but other aspects like that of claims and addressing local patent law remains dubious. An expedited examination is important but not as important as the right of an applicant. It will be interesting to see how it can benefit India in patent prosecution being in PPH with Japan. The result of this PPH might set an example for other developing countries to decide whether to get on board with PPH or not.

    Views are personal only.

    (Author is pursuing LL.M from Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur)

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