The Patent Prosecution Highway

• Published date: 10 January 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Dehns
• Author: Dehns &nbsp

The Patent Prosecution Highway (PPH) provides a mechanism for accelerating examination of a patent application at a second patent office, if examination work has already been conducted at a first patent office with whom a PPH agreement is in place. If claims of an application have been found acceptable by a first office (often the office of first filing), accelerated examination of a corresponding application at a second office may be requested. The PPH allows a second patent office to make use of relevant work already conducted by a first office when examining an application.

PPH agreements between UKIPO and other offices

The UK Intellectual Property Office (UKIPO) is a participant in the Global Patent Prosecution Highway (GPPH). The GPPH is a pilot programme between 27 different offices across the world and allows PPH to be used for applications that are filed at two or more of these offices.

Separate bilateral agreements exist between the UKIPO and the State Intellectual Property Office of the People's Republic of China (SIPO), and the UKIPO and the Brazilian National Institute of Industrial Property (INPI-BR). Neither SIPO nor INPI-BR participate in the GPPH programme.

PPH agreements between EPO and other offices

The European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People's Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO), referred to as the IP5 Offices, are cooperating through a comprehensive Patent Prosecution Highway pilot programme.

The IP5 PPH pilot programme commenced in 2014 for an initial period of three years. This has been extended twice and the programme is now running until at least 2023, while its long term feasibility is assessed. The EPO does not participate in the GPPH.

PPH agreements also exist between the EPO and each of IPA (Australia), INPI (Brazil), CIPO (Canada), SIC (Colombia), Eurasian Patent Office (EAPO), ILPO (Israel), MyIPO (Malaysia), IMPI (Mexico), INDECOPI (Peru), IPOPHL (the Philippines), ROSPATENT (Russia)...