Strategies for potential PPH participation

The Patent Prosecution Highway (PPH) is a treaty program of participating national patent offices. The PPH program allows an inventor to fast track coordinating patent applications in various countries once related patent claims are allowed in WIPO or one of the participating country’s patent offices. This procedure is available even in cases where the U.S. fast tractk option is not available to an applicant and may avoid some of the disadvantages of the Accelerated Examination Program in the US.

If you are considering the PPH program, the following are strategies to help maximize the benefits of the program:

  1. Draft additional dependent claims in the U.S. application when filing the PPH request. This allows for flexibility in amending the independent claims during prosecution of the U.S. application.
  2. When the Written Opinion appears negative and you may receive a more favorable opinion with amendments or arguments, file a demand for further examination (Chapter II Demand) in the PCT application.
  3. To increase the likelihood of a favorable patentability report on the PCT application, consider using claims that are narrower than you would prefer, as long as they are still commercially valuable.
  4. If you find that features of the invention may help you overcome a rejection by the USPTO, file a continuation application in the U.S. to add these claims.
  5. Determine early on whether the U.S. application qualifies for the PPH program by reviewing currently pending (but not yet examined) U.S. applications and new national stage applications for claims that meet the novelty and inventive step standards during the international phase.

By utilizing the PPH program and maximizing the benefits of the program as outlined above, the owner of the invention may be able to use the PPH  program to convert “patent pending” status into a U.S.  and foreign patents early enough to positively impact critical stages of development and marketing of the product.