Tips and Tricks: Filing a PPH Request in the United States

Guest post by Katherine Chi

The Patent Prosecution Highway (PPH) program can be an excellent way to more quickly move a patent to issue. Via PPH, participating patent offices may expedite examination of applications which have at least one claim allowed in another PPH patent office. A listing of participating PPH offices may be found here.

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.

Should your U.S. patent application meet the PPH requirements, a PPH request form may be submitted. 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