Patent Prosecution in a Global Context and a Scalable Framework for PPH within the PCT

Since the 1970’s, there has been an international mechanism in place for filing patent applications, in the form of the Patent Cooperation Treaty (PCT). Through the PCT, not just the filing of patent applications, but also search and preliminary examination have been harmonized internationally. With help of the PCT, a single “international” patent application can be used in about 150 different regions and countries. Furthermore, by using a PCT patent application, the applicant has about 30 months’ time from the priority date to decide which countries or regions to pursue protection in. The PCT is a fundamental part of the patent system worldwide. The PCT is used not just by large multinational corporations, but also mid-sized firms with markets to protect in multiple countries and regions.

However, the PCT only covers filing, search, and optionally, via filing a demand, a part of examination (first 1-2 Office actions). The PCT does not cover any later stages, such as allowance.

To compensate for this deficiency, since the 2000’s, many patent offices including the EPO have formed bilateral or multilateral treaties in which they effectively acknowledge an allowance that was issued by the counterparty patent office. These programs are collectively known as the “Patent Prosecution Highway” (PPH). Here are some common scenarios that take place under the PPH:

• Example 1: The EPO issues an allowance, and then the applicant requests PPH based on the EPO allowance to a co-pending family member at another patent office such as Malaysia.
• Example 2: The US Patent Office (USPTO) issues an allowance, and then the applicant requests PPH based on the USPTO allowance to multiple co-pending family members at smaller patent offices such as Mexico, Brazil, and Saudi Arabia.

In general, the PPH acceptance rate is high. In particular, patent offices almost always accept examination results from another patent office as part of a PPH request, even though the PPH scheme does not oblige them to do so.

In the meantime, there are over 56 patent offices worldwide that participate in various PPH programs, and more if other PPH-similar programs such as ASEAN Patent Examination Co-operation (ASPEC) and PROSUR for South American countries are counted toward the total. The number of separate bilateral and multilateral treaties underlying the PPH framework is difficult to quantify, but likely numbers at least several hundred separate treaties, worldwide. Here is a graphic that shows some, but not all, of the existing PPH routes:

In summary, the PPH is a huge, worldwide success. But as the PPH framework continues to evolve and be adopted in various countries, the sheer number of PPH programs, as well as the implementation as bilateral or multilateral treaties, has been unwieldy for some time now, and continues to become more tangled and chaotic.

The current, piecemeal PPH is not just messy and decentralized with respect to the treaties governing it. Piecemeal PPH is also a huge administrative burden on applicants, since the current framework does not allow PPH requests to “scale”. The current PPH framework also does not allow patent offices to coordinate the timelines of their examination work. Currently, patent offices do not know at an early phase whether an applicant intends to request PPH within a family of patent applications.

A single PPH request is usually at least 10 to 20 pages long, but may be up to 80 pages, accounting for claim correspondence tables, examination records, translations, reasons for allowance, etc. Processing a single PPH request usually involves several hours of work for outside counsel, as well as several hours at the patent office that receives the PPH request. Each PPH treaty has its own associated rules, such as PPH can only be requested before a first Office action or before Examination is requested. Each PPH treaty requires different work products to be submitted with a PPH request. Each PPH treaty has its own associated deadlines and timeline, e.g. examination of a PPH request is completed within 1 year of submitting the PPH request. So, in the above examples, submitting a single PPH request and monitoring its progress may mean dozens of additional pages of documentation, and hours wasted on administrative minutiae.

Because the filing of multiple PPH applications does not scale, filing four PPH requests at four different national patent offices, even if they are all based on the same allowance, costs approximately four times the resources as filing a single PPH request. For each PPH request, the applicant must first check whether a treaty exists between the respective offices. Then the applicant must check, at the office to which the PPH request will be addressed, whether the application is at a stage where PPH is still admissible. Then the applicant must prepare the PPH materials, which always include the allowed claims and a translation into the language of the office receiving the PPH request. Required materials may furthermore include examination results, cited references, and translations of these; for each PPH request, the applicant must ensure that these various requirements are met. Then, the applicant must follow up with each patent office that received a PPH request and monitor deadlines, which are different for each patent office. For example, one office may commit to examining PPH requests within 3 months, while another office takes 1 year.

Another problem with the current, piecemeal PPH framework is the timing. Because PPH is requested “a posteriori”, after examination concludes with an allowance, the intention of the applicant to use an application to request PPH is not known to any patent office at the entry to the national/regional phase. Therefore, the intention of an applicant to get an allowance that would be usable as a PPH request does not currently translate to expedited examination in the first office of examination, unless the applicant takes it upon themself to request expedited examination. As a result, by the time an allowance is obtained, it is often too late to “officially” request PPH at other offices, which have already begun examination.

Since offices do not know “a priori”, i.e. at the time of entry to the national phase and before examination before a regional or national patent office, that an applicant is intending to request PPH, patent offices cannot react to this and either expedite or delay the start of examination. Ideally, patent offices that the applicant would like to use as a basis for requesting PPH should expedite examination, while patent offices which are to receive PPH requests would defer the start of examination in anticipation of the PPH request.

If there were a cohesive PPH framework in place, PPH requests could easily be automated to scale and the timing of examination could be coordinated between patent offices, saving enormous amounts of time and money. Ideally, such a framework should be administered by the World Intellectual Property Organization (WIPO), and should be incorporated into the existing Patent Cooperation Treaty (PCT). International filings with the PCT system are administered by WIPO’s International Bureau (IB). The existing PCT should be amended to include an additional Chapter that covers PPH-type allowances. Then PCT filings through WIPO’s International Bureau could have PPH in a more scalable, automated form. This could replace the hundreds of piecemeal PPH treaties, and significantly relieve applicants around the world of the associated administrative burden of requesting PPH at each of the multiple patent offices once a first patent office has allowed an application.

According to the proposed scheme, the involvement of the IB would not cease when the PCT application entered the regional/national phase. As of today, the involvement of the IB generally ceases after entry to the national or regional phase, and responsibility shifts to individual national/regional patent offices. The IB’s involvement according to the proposed scheme would continue beyond entry to the regional/national phase. The IB’s role after entry to the national/regional phase would be of administrative nature, acting as a proxy between patent offices in the case that the applicant intends to use an allowance from one patent office to request PPH at one or more other patent offices.

Under the proposed framework with PPH integrated into the PCT (“PPH-via-PCT”), the above examples would be handled differently, as follows:

• Example 1:
  • An applicant filed a PCT application in English and designated the EPO, as well as the patent office of Malaysia (MY).
  • When entering the national phase in MY, the applicant indicated to the PCT’s International Bureau (IB) that PPH would be requested upon EPO allowance. When entering the regional phase in EP, the applicant indicated to the IB that the EPO’s examination results would be taken as a basis for later PPH requests.
  • After several rounds of prosecution before the EPO, the EPO issues an allowance. After the applicant approves the allowed claims for PPH and provides claim translations where applicable, the IB forwards the allowance and the corresponding claims to MY for formality checks and examination within a designated timeline (e.g. 3 months), which would usually lead to allowance.
• Example 2:
  • An applicant filed a PCT application and designated the USPTO, as well as the patent offices of Mexico (MX), Brazil (BR), and Saudi Arabia (SA).
  • When entering the national phases in MX, BR, and SA, the applicant indicated to the International Bureau (IB) that PPH would be requested upon USPTO allowance. When entering the US national phase, the applicant indicated to the IB that the USPTO’s examination results would be taken as a basis for later PPH requests.
  • After several rounds of prosecution before the USPTO, the USPTO issues an allowance and notifies the IB of the allowed claims. After the applicant approves the allowed claims for PPH and provides claim translations where applicable, the IB forwards the allowance and the corresponding claims to MX, BR, and SA for formality checks and examination within a designated timeline (e.g. 3 months), which would usually lead to allowance.

As stated above, the PPH already enjoys widespread acceptance, and so this proposed change in the framework would not impinge on the sovereignty of the participating nations, as they already have multiple, piecemeal agreements acknowledging allowances from other nation’s patent offices. The patent offices receiving PPH requests would remain in principle free to disagree with the examination conclusion of the office that allowed the claims. But the expectation is that, as currently, PPH requests would lead to allowances rather than further examination in the vast majority of cases.

This proposed change would significantly decrease costs and administrative burdens for both applicants and patent office administrative staff. And it would effectively lower the barrier for companies to patent inventions in multiple jurisdictions that are less-frequently used, but still important in the global IP landscape. So, it would potentially broaden the patent field and especially have a significant impact in countries that currently do not see a high throughput in their patent offices.

How would this work? We first consider a two-tiered system, with major patent offices as “source” offices, commonly referred to as Offices of Earlier Examination (OEE). In the following, we will adopt the term PPH-OEE’s. These are patent offices that provide high-quality examination on a short timeline. For example, the IP5 offices (namely: the USPTO, the Japan Patent Office (JPO), the EPO, the China National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO)) could initially be recognized as PPH-OEE’s, but other offices could petition WIPO to be added to the list of PPH-OEE’s.

All other patent offices that have at least one existing PPH with one of the IP5 offices could be included as “PPH-receiving” offices, commonly referred to as Offices of Later Examination (OLE). In the following, we will adopt the term “PPH-OLE.” Before the adoption of this system, each PPH-OLE would indicate to WIPO which of the PPH-OEE offices are approved, in the sense that an allowance from the PPH-OEE could be acknowledged as a PPH request within the PPH-OLE. For example, the Finnish patent office as a PPH-OLE could indicate to WIPO that the EPO and USPTO were acknowledged PPH-OEE offices, but that JPO, CNIPA and KIPO were not acknowledged as PPH-OEE offices. This would not have to be re-decided by the PPH-OLE’s, but could simply reflect existing PPH agreements.

Once the system is in place, when an applicant files a PCT application or, at the latest, at the deadline for entering the national/regional phase, applicants could indicate to WIPO’s International Bureau (IB) for each designated PPH-OLE, which (if any) of the approved PPH-OEE(s) was to be used.

Considering another example,

• Example 3: An applicant filed a PCT application and designated the EPO and the USPTO as PPH-OEE’s. The applicant designated the following PPH-OLE’s: Malaysia (MY), Colombia (CO), Philippines (PH), and Israel (IL).
  • When entering the national phase in MY and CO, the applicant ticked a box to indicate that the EPO should be used as PPH-OEE.
  • When entering the national phase in PH and IL, the applicant ticked a box to indicate that the USPTO should be used as PPH-OEE.
  • When entering the regional phase in EP and the national phase at the USPTO, the applicant indicated to the International Bureau (IB) that these had been selected as PPH-OEE offices.
  • At this point, the PPH-OLE’s (MY, CO, PH, IL) have the option to defer examination (subject to their own national laws and regulations). The PPH-OEE’s (EPO, USPTO) have the option to expedite examination (subject to their own guidelines, or at the applicant’s request).
  • When the PPH-OEE’s conclude examination and issue an allowance, the applicant can approve the allowed claims for PPH and provide claim translations where applicable. Then these are communicated via the IB to the corresponding PPH-OLE’s that were selected by the applicant. At this point, the PPH-OLE’s have a fixed time limit such as 3m to check formalities and conduct examination, which would usually lead to an allowance.
  • The applicant then pays issue fees at the PPH-OLE.

Multiple possible implementations for various issues: According to this PPH-via-PCT framework, there are multiple implementation details that could be resolved in various ways. Here are a few issues that would need to be addressed. For these issues, we only describe one way to handle them, although there are various ways they could be addressed.

Multiple Source Offices: In the above example, it might also be possible to select, for a single PPH-OLE such as MY, two or more PPH-OEE’s such as the EPO and the USPTO. In this scenario, if the EPO issues an allowance first but the applicant prefers to have the US claim scope in MY, the applicant could simply ignore the first MY allowance (based on the EP claims) and wait for the later MY allowance (based on the US claims).

Expedite or Defer Examination: In case one or more of the PPH-OLE’s had the policy to defer examination, then they might also adapt their fee structures, to waive search and examination fees. When the PPH-OLE received an allowance from a PPH-OEE, the PPH-OLE might charge only a nominal fee for a formalities check. Then, after allowance, the fees at the PPH-OLE would proceed with the normal issue fees, and then maintenance fees for the patent.

Special case, patentable claims at the PCT stage: In some cases, when a search and preliminary examination is performed during the PCT stage, the claims may already be found to be novel and inventive. If this is the case, then the OLE can proceed directly to an allowance based on the claims as soon as they enter the national phase. There is already a PCT program in place which implements this for certain country combinations, namely PCT-PPH. This integrates seamlessly with the proposed PPH-via-PCT.

Translations: An open question is how to deal with translations, e.g. whether the PPH-OLE’s would require a machine translation upfront; alternatively, PPH-OLE’s might accept claim translations after an allowance was received from the source. Ideally, machine translations needed at various stages (for example, examination reports from the PPH-OEE) could also be provided automatically by the IB, for a fee.

Fees: The IB would have to charge fees for use of the PPH-via-PCT program, as the proposed framework increases workflows and liability for the IB. There could be a fixed fee for participation in the PPH-via-PCT program, as well as a fee for each PPH-OEE and PPH-OLE indicated by the applicant. The fees should be determined in a way that they cover the IB’s costs, including docketing of information, initial notification of PPH-OEE’s and PPH-OLE’s of an application’s enrollment in PPH-via-PCT to enable the respective patent offices to accelerate or delay examination according to their role as PPH-OEE or PPH-OLE, as well as machine translations of examination results and forwarding of allowed claims. All of this work could be automated by the IB, so that the overall costs of multiple PPH requests would be significantly decreased through participation in PPH-via-PCT.

In this way, the hundreds of existing PPH agreements could be transformed and integrated into one single PCT-based framework.

Of course, one important difference between this “two-tiered” system with PPH-OEE’s and PPH-OLE’s is that the bilaterality of existing PPH agreements is lost. Understandably, some offices might see that as a loss of standing if they were expected to accept prosecution results from larger patent offices, but their own examination results were not acknowledged in return.

One solution to this problem would be to “split” existing PPH agreements, keeping half of the agreement in the existing PPH framework, and incorporating the other half into the PCT. Taking an example: The EPO and Malaysia currently have a PPH agreement. According to the new scheme, an applicant could use the PCT to “automatically” send an EPO allowance to Malaysia as PPH-OLE. If, however, an applicant wanted to have their application examined in Malaysia and then use the resulting allowance to request PPH at the EPO, the applicant could do this via the legacy PPH agreement. This would entail the applicant monitoring the MY application for an allowance, then drafting a PPH request with the allowed MY claims addressed to the EPO. So, the two “halves” of the original PPH agreement would both still exist, but in different forms:

• PPH request from EPO to MY: via PCT
• PPH request from MY to EPO: via legacy PPH agreement

Another solution would be to not implement this with two tiers, but in fact to allow the PCT applicant to select any office (with one or more existing PPH agreements) as PPH-OEE, and any other office (with an existing PPH agreement to that source office) as PPH-OLE. In other words, this solution would fully incorporate all PPH agreements, in both directions, into one single PCT framework.

So, there are two alternatives for the transition from current PPH to the proposed PPH-via-PCT. In the first alternative, the two-tiered system is effectively a “unidirectional” solution. In the second alternative, the fully-integrated system is effectively a “bidirectional” solution.

The two-tiered system would likely be easier for applicants to work with. This is because, effectively, the larger patent offices are used most frequently as PPH-OEE’s and it would increase the complexity of the forms to have dozens of PPH-OEE options instead of only, say, five. However, the fully-integrated system that transforms all PPH agreements in both directions into a single, PCT-integrated system would be easier for legislators to implement, because it does not divide countries into tiers (understandably, some countries might object to what they perceive as a lower-tier status). Furthermore, it would not necessitate any residual “legacy” agreements, and so this better serves the purpose of reducing the complexity of the existing system overall.

Finally, one important aspect of existing PPH agreements is the autonomy of PPH-OLE’s, in that the results of examination from a PPH-OEE cannot be imposed on any PPH-OLE. In other words, each PPH-OLE must be able to come to its own independent results with respect to the examination of applications. Therefore, existing PPH agreements all stipulate that the PPH-OLE has the option, after examining the PPH request, to decline to allow the application on the basis of the claims from the PPH request and instead continue examination. As already stated, this happens in only a small proportion of cases overall. The aspect of autonomy must be preserved if PPH is incorporated into the PCT framework.

The idea of incorporating PPH into the PCT has already been advanced by patent offices around the world, leading to a WIPO Working Group considering the issue in October 2022PCT Working Group 15^th sess. Geneva, Oct. 3-7, 2022 “FORMAL INTEGRATION OF THE PATENT PROSECUTION HIGHWAY INTO THE PCT: REVISED APPROACH” submitted by Japan, Korea, UK, USA https://www.wipo.int/edocs/mdocs/pct/en/pct_wg_15/pct_wg_15_16.pdf. The initiative was spearheaded by Japan, Korea, the UK, and the US. The leadership of Japan in this issue is welcome, as Japan has already been a key player in consolidating bilateral PPH treaties into the largest multilateral PPH treaty, the Global PPH.

Unfortunately, since the WIPO working group in 2022, it seems that little progress has been made. Since the idea of incorporating PPH into the PCT is widely accepted by most countries, and there are only a handful of dissenters, one possibility would be to go ahead with it, but without requiring countries to join from the outset. In the same way that Spain remains outside the newly-formed UPC, the countries that do not see merits of incorporating PPH into PCT could simply remain outside the system and continue to operate with legacy PPH agreements.

In conclusion, with the ever-increasing complexity of PPH, now may be the time to streamline these myriad programs into a single framework. Incorporating existing PPH agreements into the most trusted and successful international patent framework, the PCT, would enable scaling effects for multiple PPH applications and coordination of examination timelines between patent offices. This would benefit applicants and patent offices worldwide.

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