STRATEGIC CONSIDERATIONS IN
COORDINATING ACCELERATION OF
INTERNATIONAL PATENT PROSECUTION
Kathryn H. Wade, Ph.D.1, Hazim Ansari2,
and John K. McDonald, Ph.D1.
1
2
Kilpatrick Stockton LLP, 1100 Peachtree Street, Suite 2800, Atlanta, GA 30309
Hennigan, Bennett and Dorman, 865 S. Figueroa St., Suite 2900, Los Angeles, CA 90017
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Page 2 of 10
STRATEGIC CONSIDERATIONS IN COORDINATING ACCELERATION OF
INTERNATIONAL PATENT PROSECUTION
By Kathryn H. Wade, Ph.D., Hazim Ansari, and John K. McDonald, Ph.D.
Forming a global patent strategy requires careful consideration of several new
developments for accelerating U.S. & foreign patent prosecution. In particular, this article will
provide a brief introduction to: the Patent Prosecution Highway programs currently in place; new
approaches for accelerating U.S. patent applications which are different from the old petitions to
make special; and accelerated examination in Europe.1 These three topics will be addressed in
the context of the impact of the different options on forming a global patent strategy.
Patent Prosecution Highway (PPH)
The Patent Prosecution Highway (PPH) is a fairly new program that has major
implications for accelerating patent grants and for coordinating global patent strategy. The goal
for implementing this program was to improve efficiency at the National Patent Offices. It is
well known that the Patent Offices are overburdened with extremely high numbers of
applications. For example, the U.S. Patent and Trademark Office is experiencing not only a high
turn-over rate of patent examiners, but also an increase in the number of filed applications. The
European Patent Office has experienced a dramatic increase in filed applications during the last
few years, and examiners are struggling with their caseloads. Therefore, the delays in
prosecution are steadily increasing. By using searches that have been conducted by the other
Patent Offices and by taking advantage of the initial examining process of the other Patent
Offices, the goal of the PPH is to make the overall process in each of the Patent Offices more
efficient.
The essence of the PPH program is that when an Office of First Filing (OFF) rules that at
least one claim in an application is patentable, the patent applicant can then ask the office of a
second filed patent application to “fast track” the examination of the corresponding claims in that
second application. One consideration to keep in mind is that not all countries currently
participate in the Patent Prosecution Highway; however, several of the arguably most important
filing jurisdictions do participate. The first program was initiated between the U.S. and Japan on
an experimental basis in July 2006 and was fully implemented as of January 2008. A PPH
program between the U.S. and Korea also was fully implemented as of January 2009. Canada,
1
There are several other programs involving the cooperation of different national/regional patent offices (e.g., the
tri-way pilot program between Europe, Japan, and the U.S.; the work sharing program proposed in October 2008 by
Korea, Europe, Japan, China, and the U.S.). However, this article will not address these programs. The tri-way
program was implemented at the end of July 2008, and therefore, meaningful data regarding how this program is
going to affect the prosecution of a particular application does not yet exist. The work sharing program has not yet
been implemented. Leaders from the five participating Patent Offices met in late October 2008, assigned two
specific projects to each of the participating Patent Offices, and agreed that each Patent Office would provide to the
other participating Offices no later than April 2009 a proposal for how to implement the projects. Information
regarding both of these programs may be found on the U.S. Patent and Trademark Office website.
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Australia, the United Kingdom (U.K.), Europe, Denmark, and Singapore all currently have PPH
trial programs in place with the U.S. These programs demonstrate an effort toward achieving
more of a global patent harmonization, particularly as our global economy is in decline.
To date, these programs appear to be quite successful. For example, we have used the
PPH in Japan and Korea (based on allowed claims in a U.S. application) and have obtained
prompt examination. Both Patent Offices issued a first office action within eight to twelve
weeks of our request. This program can shave years from application pendency in Japan, where
it is not uncommon to receive a first Office Action more than three years after filing the
application. We recently entered the PPH in Japan in early May and received a notice of
allowance in November, a remarkable savings of time and money. In another example, our
colleagues in the United Kingdom have indicated that the U.K. Patent Office is moving PPHaccelerated applications very quickly and is anxious to receive more applications through this
program. In fact, our colleagues have received allowance of an application within four months
after accelerating the case through the PPH in the U.K.
PPH programs also exist between certain foreign countries. Australia, Canada, Europe
and Singapore each only has a PPH relationship with the U.S. However, Korea, the UK, and
Denmark have a PPH relationship with both Japan and the U.S. In addition, Japan has a PPH
relationship with Denmark, Germany, Korea, the U.K., and the U.S. This area of coordinating
patent examination among several countries is changing rapidly as more countries implement
PPH programs, and therefore, in order to maximize the efficiency of acceleration of patent grants
in specific jurisdictions, it is important that a patent applicant’s counsel is aware of the different
relationships of the Patent Offices involved. In addition, it is highly advantageous for the patent
applicant’s counsel to have close relationships with foreign counsel because examination moves
quickly on the PPH. Communication is essential, and rapid responsiveness is critical.
Requirements of PPH
In order for an application to be eligible for accelerated examination through the PPH,
certain requirements must be met. To illustrate these requirements, consider that U.S. and
Japanese national phase applications were filed, claiming priority to a PCT application that does
not claim any priority.2 First, one of the applications must have at least one allowable claim. In
this example, if the Japanese Patent Office first examines the case and finds that at least one
claim is allowable, then the U.S. application may be eligible to use the PPH program to
accelerate prosecution in the U.S. Second, examination of the second application in another PPH
jurisdiction (i.e., the U.S. application in this example) must not have begun.
Third, the applicant must file a request and a petition to enter the PPH. These forms are
available on the participating Patent Office web sites. Fourth, the claims in the second
2
There are specific requirements about what types of priority claims are acceptable for applications using the PPH,
and the acceptable priority claims are described in detail on the participating countries’ Patent Office websites. In
particular, typically an eligible patent application may claim priority to a national patent application filing in the
Office of First Filing (OFF), a PCT application having no priority claim, a PCT application claiming priority to
another PCT application which then has no priority claim, or a PCT claiming priority to a national filing in the OFF.
US2000 11248180.1
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application must be amended to correspond to the subject matter of the allowable claims in the
first application. This amendment often will result in a narrowing of the claims, which may not
be acceptable in certain circumstances. However, the applicant has the option to file
continuation or divisional applications using traditional prosecution pathways to pursue the
desired broader claim coverage, while simultaneously prosecuting the application with the more
narrow claims using the PPH. In addition, certain claims would not be advisable to pursue on
the PPH. For example, method of treatment claims are patentable in the U.S., but are not
patentable in certain other countries. There are different approaches to amend method of
treatment claims into an acceptable format, such as “use” type claims (e.g., pharmaceutical
compositions for use in certain treatment), however, not all countries allow even the amended
claim type. Therefore, one must consider the claims and whether or not they would be most
appropriate for acceleration in one jurisdiction over another.3 The applicant must submit a
claims correspondence table that shows the correlation between the allowed claims in the first
application and the amended claims in the second application. This table facilitates the
examiner’s ability to evaluate the similarity and scope of the claims to ensure that the application
is eligible for the PPH. We routinely send draft claims to our foreign associates for review and
comment before entering the PPH. Again, effective working relationships with foreign patent
counsel are essential for smooth traveling on the PPH.
Fifth, the applicant must submit a copy of the Office Actions and the prior art references
that were disclosed in the first application. Of course, in the U.S., there is a continuing duty to
disclose all potentially material prior art documents under Rule 56. Therefore, in this example,
the applicant must disclose in an information disclosure statement not only the references
identified in the Japanese search and PCT search report, but also any prior art known that is
potentially material to patentability of the claimed invention.
The advantage of compiling the required information and amending the claims is a
significant reduction in the time to obtain issuance of a patent in the U.S. or other PPH country.
This reduction in application pendency can decrease the total cost of prosecution by limiting the
rounds of Office Actions necessary to reach agreement on allowable claim language. However,
applicants must keep in mind that while overall cost may be reduced, applicants will incur costs
and fees much earlier than usual. These costs and fees are due to work that must be completed at
an early stage, such as amending the claims, preparing a claims correspondence table, interacting
with the foreign associate, filing a request for examination earlier, and filing a request to
accelerate examination. These items require both legal fees and government filing fees.
In addition, it is important to note that the Office of Second Filing (OSF) is not “rubber
stamping” the determination made by the OFF. In fact, the OSF does not necessarily limit their
consideration to the art that was supplied during prosecution in the OFF, and may conduct
additional searches that might reveal art that was not considered in the OFF. There are also other
considerations such as sufficient enablement or literal support which may have different
requirements in different countries, and therefore, may affect examination in the OSF.
3
Another example of claims for which the PPH may not be useful are claims related to stem cells, which would be
patentable in the U.S., but not in certain other jurisdictions.
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To see the advantages of using the PPH, it is helpful to look at a specific example such as
shown in Figure 1. This figure illustrates the interplay between the various Patent Offices with
respect to the PPH. In this example, PCT national phase applications were filed in Australia, the
U.S., Canada, Korea, and Japan, based on a PCT application that does not contain a priority
claim. At least one claim was found allowable in Australia and Japan. First, the U.S. application
is available for filing a request for entering the PPH, through two different routes. This is
because the U.S. case has not been examined and because the U.S. has a PPH relationship with
both countries (Australia and Japan) in which claims were allowed. Although the Canadian
application also is pending and has not started prosecution, that application is not eligible to use
the PPH program because Canada does not have a PPH program established with either Australia
or Japan. The Korean application also is pending, but it has already been examined. Therefore,
the Korean application also is not eligible to use the PPH. Because Korea does have a PPH
relationship with Japan, if prosecution had not yet started, then that Korean application could
have used the PPH based on the allowable claims in the Japanese application.
Advantages and Necessary Considerations of Using the PPH
As discussed above, there are distinct advantages of using the PPH program. Applicants
can accelerate the timing to a first action by a Patent Office and can increase the speed to get an
issued patent, giving the patentee the early ability to exclude others from making, using, selling,
or practicing the claimed invention. This acceleration to patent issuance can eliminate or reduce
the competition, which is particularly useful, for example, in circumstances where you know that
your competitor has a manufacturing facility in a PPH country. Early patent issuance also
increases the licensing value of a particular invention, as allowed claims will drive up the value
of the potential royalties and milestones for the license of the technology. In addition, the
perceived value of the company can certainly increase after having a series of patents issue fairly
quickly, i.e., within a twelve month time period, by using the PPH in several jurisdictions after a
first allowance. This result can be a very significant driver for stock value, and it also can attract
private investment.
The applicant also must choose carefully where PPH acceleration should begin,
particularly with respect to choosing the best jurisdiction for the types of claims that the
applicant is interested in pursuing. As discussed earlier, the applicant must consider whether
claims can be successfully reformatted to suit the laws of each Patent Office. When considering
entry into the PPH, applicant’s counsel should forward claims that are close to allowance, for
example in the U.S., to a colleague in another PPH country/region to review and suggest
acceptable claim format for that country/region. Then the applicant can review the proposed
claims for use in the PPH in that country/region. This proactive measure can minimize potential
inefficiencies in the PPH system because once you trigger the PPH entry, you must have the
claims in proper format for allowance pursuant to the laws of that country. By engaging in this
proactive discussion, the applicant will consider at an early stage whether it is willing to accept
claims of a particular scope, and certain problems also may be identified as a result of trying to
re-format the claims.
There are also disadvantages of using the PPH program. As discussed above, this
process involves significant costs up front, for example, in terms of attorneys’ fees for getting the
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case in proper condition to enter the PPH; governmental fees for requesting examination; and
legal fees associated with preparing and submitting information disclosure statements. Another
disadvantage is that you typically will be limited in the claim scope, being restricted to the
allowable subject matter in the first application. Therefore, if that is not acceptable to an
applicant in a particular case, then the PPH would not be the best approach. However, if there is
significant competition and the applicant has an allowable claim that is sufficient to cover the
competitor’s manufacturing, distribution, or importation of a product, then the PPH can be very
desirable. Additional strategic considerations in coordinating an applicant’s global patent
strategy will be discussed following a brief description of accelerated examination programs in
the U.S. and Europe.
Accelerated Examination in the U.S.
Applicants can accelerate examination of a U.S. application by filing a petition to make
special under 37 C.F.R. § 1.102. This accelerated examination previously was possible only
under certain specific circumstances, such as: if the invention was deemed of peculiar
importance to some branch of the public service and a Governmental department head requested
immediate action; if the accelerated examination was necessary due to the applicant’s age (i.e.,
65 or older) or health; or if the invention would materially enhance the quality of the
environment, contribute to the development or conservation of energy resources, or contribute to
countering terrorism.
These rules for accelerating examination in the United States recently have changed.
Petitions to make special due to the applicant’s age or health are still possible, and there is still
no fee due and very little extra effort by the applicant necessary to request accelerated
examination in those instances. The revised rules now provide a means for an applicant to
accelerate prosecution of his application under any circumstances, and not just the previously
specified ones; however, the applicants that do not have age or health-related reasons for seeking
accelerated examination are required to pay a fee and do some proactive work to assist the
Examiner. This new program guarantees a final decision on patentability (i.e., a Final Office
Action or a Notice of Allowance) within 12 months of the petition, in exchange for the additional
work on the part of the applicant, as discussed below. This new accelerated examination
program was created to decrease the pendency of applications to minimize any negative impact
of such pendency on commercial viability of the patent. The program forces early interaction
with the patent examiner, and it narrows the scope of issues under consideration in the
application. In using this system, we have received first actions, in the form of restriction
requirements, within six weeks of requesting accelerated examination. This time period is
significantly decreased from the typical two to four years seen in certain art units.
Applicants that do not have age or health-related reasons for seeking accelerated
examination must file a complete petition to make special along with the appropriate fees, the
patent application, an information disclosure statement, an examination support document, and a
declaration and power of attorney using the e-file system in order to request accelerated
examination in the U.S. Applications under accelerated examination must be limited both in the
number and in the scope of the claims. The applications may only have twenty claims, with no
more than three independent claims. The applicant must conduct and submit the results of a
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patentability search at the time of filing.4 This search must utilize acceptable national and
international databases and must cover the subject matter of all of the claims, including
dependent claims. An applicant should not conduct a very broad search if it intends to pursue a
fairly narrow set of claims. Furthermore, applicants are well advised to consider submitting a
fairly narrow set of claims under this program because they are likely to receive a restriction
requirement, and that requirement cannot be traversed.
The applicants that do not have age or health-related reasons for seeking accelerated
examination also must characterize the search results in writing. Applicants should limit the
search results to those that are most relevant to the patentability of the claims. Both the search
itself and the characterization must be carefully considered to avoid later pitfalls when trying to
enforce the resulting patent. The required written characterization in the examination support
document must be well reasoned as that characterization may certainly be good ammunition for
opposing counsel during litigation if the arguments characterizing and describing the prior art are
arguably incorrect. Moreover, if a patentee failed to disclose certain references as not being
material, and an opponent charges that the references should have been disclosed, the opponent
may assert that the patent was obtained with inequitable conduct and therefore the patent is
unenforceable.
Accelerated examination has the disadvantage that applicants must pay high fees and do
a significant amount of work at the outset in order to use this program. This is due to the cost to
conduct a patentability search and attorneys’ fees to prepare the written characterization of the
search results and to prepare information disclosure statements. Furthermore, within twelve
months, you will obtain a Final Office Action or a Notice of Allowance, and there will be a great
deal of interaction with the patent examiner until that final action. In fact, Examiners may grant
interviews before they issue the first office action, and such interviews often immediately help to
resolve minor issues through claim amendments during the interview. One option to consider if
choosing to seek accelerated examination with a narrow claim set, is to also have a co-pending
application with much broader claim scope. Therefore, if prosecution in the accelerated
examination case is not taking a good direction, another case will be pending with broader
claims. This co-pending application also may be used to file another continuation application
and request accelerated examination for claims covering different subject matter than the first
accelerated application.
Accelerated Examination in Europe
The PACE program in the European Patent Office was created to decrease pendency of
applications in Europe. It involves a simple process in which applicant’s foreign counsel merely
submits a one-page form. Use of the PACE program is quite common, and in some instances, an
applicant can obtain a first examination within three months of filing the request. One important
consideration when using this program is that the applicant must be able to respond quickly. If
the applicant does not respond within the defined specific time limits under the PACE procedure,
4
Even though applicants are required to submit a search, this does not does not mean that the patent examiner will
not conduct his or her own search as well.
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such as four months after the mailing of the office action, the application will lose its special
standing and then will go to the bottom of the pile.
The accelerated prosecution in the PACE program has several implications. An
application may have oral proceedings much earlier in order to resolve certain issues. Such
decisions have a great impact on whether or not the applicant will be able to obtain a patent for
the claimed subject matter. If a patent does in fact issue from the application, then the applicant
may face an opposition within a nine-month period. Therefore, applicants must be aware of
these potential developments in order to consider budgetary constraints and strategic
considerations before opting to use the PACE program for their applications.
Example
The potential of using both regular accelerated examination in one country and the PPH
in other countries is demonstrated in Figure 2. In this example, several national phase
applications were filed claiming priority to a PCT application which claims priority to a U.S.
provisional application. The applicant may file a second U.S. application with a narrower claim
set, claiming priority to the first U.S. application which would remain pending with a broader
claim set. Applicants could then request accelerated examination of the second application.
Once that application is found to have allowable claims, then the applicant can accelerate
examination of the applications in Australia, Canada, Europe, Japan, and Korea through the PPH
program based on the allowed claims in the second U.S. application.
Strategic Considerations
Applicants need to consider the nature and state of their business in order to determine
whether accelerated examination is appropriate for their patent portfolios. Using the PPH and/or
accelerated examination in the U.S. or Europe will allow applicants to more quickly reach
conclusion of the prosecution of an application. This resolution will allow the applicant to
prevent others from manufacturing, selling, practicing, and marketing their goods or services,
and to obtain a higher premium for its goods or services in those countries where the applicant is
obtaining allowable claims and issued patents at a faster rate. Applicants can reduce
competition, enhance licensing value, and increase the value for its shareholders using these
programs.
However, there are significant upfront costs associated with accelerated examination.
Therefore, this option may not be in the best interest of certain applicants’ businesses. For
example, newly public companies may or may not want to spend the extra money to obtain
narrow claim coverage. Early stage companies may need more time to generate funds for
prosecution and may not be able to handle the significant resulting costs if accelerated
examination is successful (e.g., translation fees for the claims upon grant in Europe, validation
fees in different countries in Europe). Other business cannot afford to wait. For example, if a
company has a blockbuster compound or some kind of software technology that might not have a
long life commercially, it may be important to take advantage of these acceleration options.
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Another reason not to pursue accelerated examination is if your company needs more
time for research and development. For example, if an application includes a very theoretical,
conceptual, or poorly enabled specification, then accelerated examination would not be advisable
because it will be difficult in many jurisdictions to obtain a patent. Similarly, some jurisdictions
may require actual reduction to practice or actual data in animals or humans, for example, in
order to make progress with the application. Therefore, if your company is not at that stage, then
accelerated examination might not be appropriate.
There are other practical considerations that companies need to consider such as the
public perception of the potential for broad claim coverage relative to the perception of actual
narrow claim coverage. Making such decisions should involve a healthy, ongoing dialogue
within the company as well as with the company’s intellectual property counsel. For example,
start up companies that are in the process of raising funds typically have very broad claims in a
patent application, knowing that that they are unlikely to obtain allowance of the broadest claims.
This is a tactic that is commonly used in order to attract investment and also, by publication, to
delay or prevent others from obtaining patents in the field. In this instance, the company may
not be interested in using accelerated examination with a narrower claim scope, unless they have
another application pending in which they can still demonstrate the broader claim coverage.
Another important factor is how well the company really knows its business and its longterm direction. For example, if the company’s resources are very limited, it may be a poor
business decision to spend significant money on accelerated examination in certain applications.
This is particularly so if the pursued claims would not cover the core products and services,
which often change for a company in the early stages. Therefore, if the company spends all its
resources in one of its technology areas using accelerated examination and then the company has
to shift business direction, there might not be sufficient resources remaining to properly protect
the inventions involved in the new business direction.
Finally, it is critical that there is a consensus dialogue within the company on the issue of
its international plans. Companies considering accelerated examination must consider where its
competitors are operating, the markets for its products or services, and where manufacturing
might occur. These factors are important topics for discussions that should occur before
spending significant money in accelerating examination in foreign countries. It is important to
have that dialogue with patent counsel early and then to appropriate the proper resources to
implement the international patent strategy. It is also critical that the company’s patent counsel
has strong relationships with foreign firms, being able to work seamlessly with foreign counsel
in terms of communication and responsiveness.
In conclusion, patent applicants must consider the nature and state of their business in
deciding whether accelerated examination is appropriate for its patent portfolio. In doing so, it is
important that applicants have serious discussions regarding the goals and state of their business,
both within the company and with outside counsel before choosing to use the PPH or accelerated
examination within the U.S. or Europe.
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FIGURE 1
Text Colors
Pending
Issued/Allowed
Expired
PPH
PCT Application
Filed 1/10/07
Australia
US
Canada
Korea
Japan
Filed 7/17/08
Filed 7/17/08
Filed 7/17/08
Filed 7/17/08
Filed 7/17/08
Issued 2/5/11
Awaiting
Exam.
Awaiting
Exam.
Response to
Office Action
due 9/18/11
Issued 3/10/11
FIGURE 2
US Provisional Application
Filed 1/17/06
PCT Application
Filed 1/10/07
Text Colors
Pending
Issued/Allowed
Expired
PPH
Australia
1st US
Canada
Europe
Japan
Korea
Filed
7/17/08
Filed
7/17/08
Filed
7/17/08
Filed
7/17/08
Filed
7/17/08
Filed
7/17/08
Regular
exam with
broader
claim
scope
2nd US
Filed 7/18/08
Accelerated exam with
narrow claim scope
Issued 7/1/09
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