Remember the PPH

Guest post by the Foreign Inbound team at McCoy Russell LLP on PPH requests.

Looking to expedite the examination process for foreign patent applications entering the U.S.?  Then the Patent Prosecution Highway (PPH) program is an excellent option for U.S. applications related to foreign applications whose claims are determined to be patentable by an Office of Earlier Examination (OEE). The PPH program is also affordable and efficient, requiring no additional government fees, and generally reduces the total number of office actions.

PPH eligibility requirements for U.S. patent applications include the following: 1) receiving official OEE notification of allowable subject matter in a related application; 2) both the application with allowable subject matter and the U.S. patent application must share a common earliest priority date; and 3) substantive examination (i.e., Office action) has not begun on the U.S. patent application.

As previously mentioned, a PPH request must be filed prior to the issuance of an Office action in the U.S. patent application; it’s recommended to file the request alongside the application submission.  To file a request for PPH examination, simply complete the USPTO form entitled “Request for Participation in the Global/Ip5 Patent Prosecution Highway (PPH) Pilot Program in the USPTO”.

The second page of the PPH form has a “Claims Correspondence Table” in which the applicant must provide an explanation to illustrate that the claim set of the U.S. application sufficiently corresponds to patentable claims in the OEE application.  The applicant may amend the claims in the U.S. application, such as, to remove multiple dependencies, part numbers, and even cancel or add claims.  Again, these amendments require concise explanations on the second page of the form. 

Further, the OEE work product must be included in the PPH request submission.  Acceptable examples of OEE work products include International Search Reports, Decisions to grant a patent, Extended European Search Reports (EESR), etc.  Additionally, the PPH request cannot be filed without an English translation of the OEE work product.

Another requirement for PPH requests, is the submission of prior art references cited in the OEE work product.  It is advisable to submit the references with the initial application submission or alongside the PPH request.

If the PPH program has piqued your interest, check out this USPTO link for additional information to fast track your U.S. patent application.