Patent Prosecution Highway

February 27, 2015

For applicants filing patent applications in more than one country costs for prosecuting those applications could add up. Even though the Patent Cooperation Treaty ("PCT") is a useful tool to reserve rights to file abroad, the PCT is not necessarily a cost or time saving measure because the application must enter national stage in each country where protection is desired. The application must then be examined by each county's intellectual property office. The time from filing to a first office action could be years and the time for allowance of the application could take even more time.

Fortunately, there is a time and cost saving avenue for applicants filing in the major patent offices around the world - Patent Prosecution Highway ("PPH") programs. As of February 2015, there were 29 countries participating in a PPH program with the U.S. Patent and Trademark Office ("PTO"). The PPH provides applicants accelerated examination based on claims allowed from a corresponding foreign application.

A U.S. patent application is eligible for the PPH if:

(i) the applicant has received an indication of allowable subject matter in a related application from a country participating in a PPH program;

(ii) the foreign application and the U.S. application share a common earliest priority date; and

(iii) substantive examination has not begun in the U.S. application.

If those criteria are met, a PPH Request Form must be submitted with the following information:

(i) a copy of the most recent foreign office action prior to the decision to grant a patent and an English translation if not in English;

(ii) an information disclosure statement listing the documents cited in the most recent foreign office action and copies of all cited documents; and

(iii) a list of claims in the U.S. application and the patentable claims in the foreign application with an explanation regarding correspondence of claims.

A PPH request is generally decided within 4 months from the filing of the request and if the PPH request is granted, the PTO will generally examine the application within 2 to 3 months from the grant of the PPH request.

By utilizing the PPH, the applicant reduces prosecution costs, provides the applicant stable patent rights efficiently around the world and reduces search and examination burden. Moreover, accelerated examination could be accomplished without additional official fees (e.g., fees for a non-PPH request for prioritized examination in the U.S. Patent and Trademark Office is $4,000). In addition, the PPH could provide consistent claims within patents issued in multiple countries. This could be particularly advantageous if the applicant/patentee later files lawsuits in multiple countries because the cost to litigate the same claims could be reduced compared with arguing different claims in different countries. However, a key disadvantage worth noting is that the possibility of obtaining broader claims in the later examined application is eliminated.

For applicants who wish to rely on previously allowed claims from a foreign utility model or an innovation patent, however, it is important to note that the corresponding U.S. application cannot enter fast track examination under the PPH unless the foreign application is for a Korean utility model.

Please note that only the general process of the PPH is discussed above. More detail is provided on the PTO website at For more information, please contact John H. Choi & Associates LLC at or 201.580.0816.