The Patent Prosecution Highway (PPH) speeds up the patent examination process for corresponding applications filed in participating intellectual property offices. Under PPH, participating patent offices have agreed that when an applicant receives a ruling from a first patent office that at least one claim is allowable, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing. There is no fee under the PPH programs.

Whereas, The USPTO offers Track One for prioritized examination of your utility and plant patent applications. Track One aims to deliver a final decision on a patent application within 12 months. It gives your application special status with fewer requirements than the current accelerated examination program and without having to perform a pre-examination search. Prioritized examination is available for a fee at the time of filing an original utility or plant application. A single request for prioritized examination may be granted for a Request for Continued Examination (RCE) in a plant or utility application.

Track One

PHP

Related Resource: Expedited Examination Making grant of patents faster in India

Guidelines

PPH Request

U.S. patent applications eligible for PPH must meet the following requirements:

1. At least one claim in a corresponding application must be allowed at an eligible* Office of Earlier Examination (OEE);
2. The U.S. application must have the same earliest priority date as the OEE application; and
3. Substantive examination of the U.S. application must not have started.

There are several pieces of information that are required by the U.S. Patent Office to complete a PPH request. Below are a few tips and tricks to help make the process of filing a U.S. PPH request go smoothly:

1.      Notify your legal counsel early

• A U.S. PPH request must be filed after at least one claim has been allowed in an OEE and before substantive examination of the U.S. application has started
• Once at least one claim has been allowed in an OEE, discuss with your legal counsel if you wish to apply for PPH status as soon as possible

2.      Provide the most recent Office of Earlier Examination (OEE) work product which shows allowed claim(s)

• If the OEE work product is not in English, you will also need to provide a translated copy of the OEE work product which shows that the claims are allowed
• If the OEE work product needs to be translated to English, machine or manual translations are accepted (translations do not have to be verified)
• Examples of OEE work products may include International Search Reports, Decisions to grant a patent, and Extended European Search Reports

3.      Provide a full listing of the OEE claims in English to your legal counsel

• A U.S. PPH request requires a that the OEE claims correspond with U.S. claims
• An English listing of the allowed OEE claims will help your legal counsel to properly fill out a claim correspondence table in the PPH request form

*eligible OEEs are PPH participating offices

Track One Request

Track One Prioritized Examination Program, the petition must include: A specification including claims but no multiple-dependent claims, no more than four independent claims, and no more than 30 total claims. Any required drawings.

The fees required to be paid on a utility patent application upon filing a request for prioritized examination of that application are:

• Basic filing fee, as set forth in 37 CFR 1.16(a).
• Search fee, as set forth in 37 CFR 1.16(k).
• Examination fee, as set forth in 37 CFR 1.16(o).
• Publication fee, as set forth in 37 CFR 1.18(d).
• Prioritized examination processing fee, as set forth in 37 CFR 1.17(i).
• Prioritized examination fee, as set forth in 37 CFR 1.17(c). EFS-Web Prioritized Examination Quick Start Guide 4
• If applicable, any application size fee, due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).
• If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h).
• If applicable, any excess claim fee, due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i).
• If requesting prioritized examination for an RCE, RCE fee, as set for in 37 CFR 1.17(e).

Conclusion

In conclusion, PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing. There is no fee under the PPH programs. Track One aims to deliver a final decision on a patent application within 12 months. It gives your application special status with fewer requirements than the current accelerated examination program and without having to perform a pre-examination search. Prioritized examination is available for a fee at the time of filing an original utility or plant application.

Unlike Track One, where the examiner has an incentive to either allow ridiculously narrow claims or kick you out of the program, PPH means you can leverage the examiner's knowledge and experience to help you.

About Effectual

Effectual Services offers comprehensive pre-examination search reports that align with the USPTO accelerated examination guidelines. Including a well-detailed search log and a discussion on the closest prior art with a focus on differentiating factors is crucial for making a petition special and expediting the examination process.