The Patent Prosecution Highway: Strategic
Considerations in
Accelerating U.S. and Foreign Patent Prosecution
ACC Quick Hits
June 13, 2012
Dr. John K. McDonald
Dr. Michael Schiff
Kilpatrick Townsend & Stockton
[email protected]
[email protected]
Your Experience
Question: Have you faced these situations?
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Why Accelerate Prosecution?
Reasons to accelerate examination
• Decrease prosecution costs and duration –
streamline world-wide budget
• Products with a short life cycle
• Infringing products already on the market
• Validate technology for partnering
• Increase IP portfolio value for investment
• Add value to goods & services
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Tactics to Expedite Prosecution
Tactics for expediting prosecution world-wide
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Patent Prosecution Highway (PPH)
PCT - PPH
Prioritized examination in the U.S.
Expediting U.S. prosecution in regular track
Accelerated exam in other jurisdictions such
as PACE in the European Patent Office
Patent Prosecution Highway (PPH)
TOPIC 1: Patent Prosecution Highway
What is the PPH?
• A rapidly expanding multinational program with
major implications for accelerating patent grants
• Claims determined as allowable in 1st country
undergo expedited search and examination in 2nd
country
• Examination in second country still done
according to national criteria
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Patent Prosecution Highway (PPH)
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Patent Prosecution Highway (PPH)
Mottainai agreement
US; Japan; Canada; Australia; Russia
EPO; UK; Finland; Spain
 “Country of First Filing” rule no longer applies
(can run PPH either way)
Works as a two way street:
Expedite foreign applications with U.S. allowance
Expedite U.S. applications with foreign allowance
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Patent Prosecution Highway (PPH)
Other PPH countries of commercial interest
Mexico; China; Taiwan; Israel; Korea; Singapore
(Country of 1st filing rule still applies)
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PCT - PPH
TOPIC 2: PPH from a PCT application
Between U.S. and:
Australia; China; Japan; Korea; Russia
EPO; Austria; Finland; Norway; Spain; Sweden
Step 1: IPRP or Written Opinion
indicating claims are patentable
Step 2: PCT-PPH in National Stage with those claims
and claim correspondence table
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PCT - PPH
To obtain indication of patentability in the PCT Stage:
• Present patentable claims
• File a Chapter II Demand for a round of
prosecution in the International Stage
• Choose a timely and competent search and
examining authority: e.g., IP Australia or EPO
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PCT - PPH
PCT-PPH can be used to expedite in the U.S. and
foreign countries simultaneously
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Expediting U.S. Examination
TOPIC 3: Prioritized examination program in the U.S.
• Cost = $5,100 ($2,700 for small entity)
•  30 claims; 4 independent claims
• 10,000 maximum per fiscal year
Objective: allowance or final rejection in 12 months
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Expediting U.S. Examination
TOPIC 4: Expediting U.S. applications in the normal track
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Start with patentable claims
First Full Action Interview Program
Interview after each Office Action
In-person interviews
After-final practice
(avoid RCE & potential delay of 12-18 months)
Current USPTO emphasis on “compact prosecution”
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Options Abroad
TOPIC 5: Options in foreign jurisdictions
• PACE program in Europe
• Expedited exam programs in Canada, the U.K.
and Australia
• Special programs: e.g., green technology in Canada
and Korea
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• Modified examination (based on allowance in first
country): Australia; Singapore; Israel; South America;
Malaysia
Coordination of Global Patent Strategy – Example 1
Text
Colors
Pending
PCT Application
Issued/Allowed
Expired
Australia
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US
Canada
Europe
Japan
Korea
Coordination of Global Patent Strategy – Example 1
PCT Application
Australia
1st US
Regular
exam
with
broader
claim
scope.
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Canada
Europe
2nd US
Filed
Prioritized exam with
narrow claim scope.
Text
Colors
Pending
Issued/Allowed
Expired
Accelerated exam.
Japan
Korea
Coordination of Global Patent Strategy – Example 1
PCT Application
Australia
No PPH as
examination
has begun
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1st US
Regular
exam
with
broader
claim
scope
Canada
Europe
2nd US
Allowed/Issued
Text
Colors
Pending
Issued/Allowed
Expired
Enter PPH
Japan
Korea
Coordination of Global Patent Strategy – Example 2
Text
Colors
US
Europe
OR
US
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Europe
Pending
Issued/Allowed
Expired
Accelerated exam.
Coordination of Global Patent Strategy – Example 2
Text
Colors
Europe
US
Pending
Issued/Allowed
Expired
Accelerate with
PACE
Accelerated
exam.
OR
US
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Europe
Accelerated exam.
Coordination of Global Patent Strategy – Example 2
Europe
US
Text
Colors
Pending
Issued/Allowed
Expired
Enter PPH
Allowed Claims
Allowed Claims
OR
US
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Europe
War Stories #1
• Client wanted to launch a filter product in Japan with a premium
price.
• We filed US and PCT applications
• Aggressively prosecuted the US application to allowance
• Requested examination and entered the PPH in Japan with the
allowed US claims
• Received allowance from JPO in 6 months (saved 2-4 years and
$$$).
WAR STORI
• Product launched with desired price
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War Stories #2
• Client required patent in Japan. PCT and US apps were filed
• Filed European application early, used PACE procedure to
expedite.
• Upon European allowance, filed request for examination and
entered PPH in Japan
• Received allowance in 3 weeks! (saved 2-4 years and $$$)
• US app was then allowed with broader claims
• Option to file divisional app in Japan to pursue broader claims
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Patent Strategy and your Business Objectives
Strategic Overview
Benefits of expediting exam:
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Decrease prosecution costs and duration (e.g., Japan)
Speed to obtaining the first patent, exclusivity
Eliminate or reduce competition
Enhance ability to eliminate or reduce competition
Faster market entry at a premium
Increase licensing value
Enhance company and patent portfolio valuation –
added shareholder value
Patent Strategy and your Business Objectives
Disadvantages of expediting exam:
• Up-front costs are greater
• PPH 2nd country constrained by claims allowed
in 1st country
• Extra time needed for R&D?
• Extra time needed to generate funds for
prosecution?
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Patent Strategy and your Business Objectives
Business Considerations:
Is the perception of potential broad claim coverage
more valuable than the reality of narrowed actual
claim coverage?
• Early stage start-ups in the process of raising
financing
• Newly public, pre-revenue companies
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Patent Strategy and your Business Objectives
Define Business Concerns:
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Are the business objectives clearly defined?
Don’t expedite exam as an academic exercise
Dangers of saying too much too early on the record
Wasting scarce resources pursuing claims which
don’t cover the core products and services
Patent Strategy and your Business Objectives
Develop realistic international plans:
• Overly optimistic projections may place greater
emphasis on foreign jurisdictions than warranted
• Important to allocate legal resources in line with
realistic operational plans
– Location of markets
– Location of competitors
– Your manufacturing locations
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Global Patent Strategy – Business Considerations
• It is strategically important to implement and coordinate a global
patent strategy
• Work with patent counsel who understands the PPH and has
close ties to competent and responsive foreign counsel who use
the PPH
• Consider importance of invention and claim coverage to
business
• Consider the activity of competitors (e.g., sales, manufacturing,
market)
• Consider coordinated strategy to take advantage of accelerated
examination in different jurisdictions and the PPH. Each country
is different
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THANK YOU
The Patent Prosecution Highway: Strategic
Considerations in
Accelerating U.S. and Foreign Patent Prosecution
ACC Quick Hits
June 13, 2012
Dr. John K. McDonald
Dr. Michael Schiff
Kilpatrick Townsend & Stockton
[email protected]
[email protected]