The prosecution of patent applications can be a long, slow road, often taking well more than three years before a patent application can be found allowable (assuming an allowance is able to be obtained). Because patents typically have a term of 20 years from the filing date or effective filing date of the application, this delay can reduce the term of a patent that issues from the application.

The delays are incurred for two primary reasons. First, there is typically a backlog that prevents an application from being immediately examined by a patent office. This backlog often creates an 18-to-24-month delay from the time an application is filed to when that application first begins to be examined by the United States Patent and Trademark Office.

Secondly, the exchange of correspondence, in which the scope of available patent protection is contested between the USPTO examiner and the applicant, can also delay the patent application process. This correspondence occurs after the USPTO begins examining the application and typically adds legal costs to the prosecution of an application. The correspondence typically includes the USPTO issuing what is called an "office action," which rejects at least some claims of a patent application. It also includes a response to that office action, filed by the applicant. It is common for more than two office actions to be issued during prosecution of a U.S. patent application.

Additionally, an appeal may be pursued to contest a rejection of claims in an application, which can add substantial costs to the prosecution of the application and further delays in having an application allowed. In many foreign countries in which a patent application may be examined, there is also an annual fee that must be paid to avoid abandonment of the application.

As delays in prosecution and subsequent costs have risen, the USPTO and other foreign patent offices initiated a program in an attempt to streamline prosecution and reduce costs associated with patent prosecution. Appropriately named the "patent prosecution highway" (PPH), this program has been improved since the first PPH program was initiated by the USPTO and the Japanese Patent Office in May 2006. The PPH program has since been expanded to include numerous other patent offices and now includes multiple types. There are currently three different types of PPH programs that may be available to a patent application: PPH, PPH 2.0 and PCT-PPH.

Increasing Allowance Rates and Decreasing Cost

Patent offices that offer PPH programs have compiled statistics comparing prosecution of PPH filings to non-PPH filings. Those statistics are available at the PPH portal site at www.jpo.go.jp/ppph-portal. As can be seen from the compiled statistics, patent applications prosecuted under a PPH program experience allowance rates that are almost double that of non-PPH applications in the USPTO and experience delays in prosecution that are about 75 percent less than a regular filed patent application in the USPTO.

For example, PPH statistics show that a PPH-prosecuted patent application has an allowance rate of about 87 percent in the United States as compared to an allowance rate that is below 52 percent for non-PPH-filed applications in the U.S. First action allowance rates (e.g., the USPTO finds an application to be allowable as filed) occur between 25 percent and 30 percent of the time during PPH prosecution (more than 30 percent for PPH filings, about 25 percent of the time for PCT-PPH filings), as compared to below 14 percent of the time with non-PPH-prosecuted applications. PPH average pendency (e.g., how much time it takes for an application to receive a first office action) is less than six months for PPH filings, as compared to about 24 months for a non-PPH-prosecuted application.

In short, the statistics clearly show that use of the PPH when available permits an applicant to much more quickly obtain examination and also experience a greater likelihood of having an application issue as a patent. These benefits also coincide with reduction in cost during prosecution, as there are less prosecution-related legal expenses that typically occur during prosecution in the PPH program. In view of the high allowance rates and low prosecution pendency identified in the current PPH statistics, a patent prosecution practice is wasting time and money when failing to take advantage of a PPH program when that program is available for an application.

PPH Applicability

Many applications can utilize a PPH program, particularly the PPH 2.0 and PCT-PPH programs. For example, any patent application that claims priority to or is within a priority chain related to a PCT application may utilize a finding of allowability issued in an international search report or written opinion issued while the PCT application is pending to utilize the PCT-PPH program (typically, such a report or opinion is issued within the first year of the PCT application being filed). If the examination authority is any of the authorities most often selected, including the Japanese Patent Office, European Patent Office, USPTO, South Korean Patent Office, Chinese Patent Office or Russian Patent Office, among others, a finding of allowability may be used as a basis for requesting that a pending application be entered into the PCT-PPH program, as long as the examination of that application has not yet begun.

If the PPH is applicable to a pending application and an allowance of claims with a desirable scope of coverage was obtained, then it would be strongly suggested that use of the PPH program be considered. To utilize the PPH program in a U.S. patent application, the claims must merely be narrowed to a scope substantially equivalent to or narrower than the broadest claim found allowable during PCT prosecution or foreign prosecution to take advantage of the PCT-PPH and PPH 2.0 programs. Utilization of both of these programs is typically easy and cost-efficient. The USPTO does not charge a fee for the filing of a petition to request entrance in a PPH program. Preparation of the petition for entrance of a PPH program in the USPTO is quite simple, so legal fees for the preparation of this request are often low for U.S. filings as well.

For any party that typically files PCT patent applications, the PCT-PPH program is likely available at any time a PCT search report or written opinion finds claims to be allowable. As allowance rates are substantively higher for PPH filings and prosecution times are substantially lower, use of the PCT-PPH program would provide significant cost savings and help to drastically increase the chances of a U.S. national stage patent application that is related to the pending PCT application being allowed.

In view of the current statistics available for PPH prosecution, it is clear that utilization of the PPH can greatly help reduce prosecution costs while also improving allowance rates. A patent prosecution best practice should therefore include steps to consider use of the PPH programs offered by the USPTO and other foreign patent offices when a PPH program is available to an application. Otherwise, the patent prosecution may get stuck in the slow lane, where time and money are likely being wasted. •

Ralph Fischer is a patent attorney in the intellectual property section of Buchanan Ingersoll & Rooney. He advises clients ranging from large international businesses to small manufacturers on various aspects of intellectual property law. He has helped clients develop IP-related employee guidelines, served as trial counsel for intellectual property litigation and routinely helps clients with patent prosecution and the management of their patent portfolios. He can be contacted at 412-392-2121 or ralph.fischer@bipc.com.