The Patent Prosecution Highway (PPH) Program

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1 The Patent Prosecution Highway (PPH) Program Paolo Trevisan Patent Attorney Office of Policy and External Affairs United States Patent and Trademark Office 1

2 The PPH Program Applications today are filed globally 2

3 The PPH Program Benefits to applicant of using the PPH program: Significantly lower prosecution costs Higher allowance rate Fewer actions per disposal Reduced rates of RCE filing and Appeal Fast-tracked examination improving timeliness of patent issuance Potentially higher quality than can be delivered by any single office acting individually 3

RCE filing and Appeal Fast-tracked examination improving timeliness of patent issuance

4 PPH Basics What is PPH? When claims are determined to be allowable in the Office of First Filing or earlier examination, a related application with corresponding claims filed in another PPH office is fast-tracked for examination Paris Route PPH and PCT PPH What is the Purpose of PPH? Second office can leverage the search and examination results of the first thereby avoiding duplication of work and expediting the examination process. 4

application with corresponding claims filed in another PPH office is fast-tracked for examination Paris Route

5 PPH Basics Two types: Paris Route and PCT 5

6 Some PPH Requirements All the claims in each U.S. application for which a request for participation in the PPH pilot program is made must sufficiently correspond to or be amended to sufficiently correspond to the allowable/patentable claims in the OEE application(s). Claims will be considered to sufficiently correspond where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope, or narrower. Examination of the U.S. application for which participation in the PPH pilot program is requested has not begun. Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings cannot take part. 6

Claims will be considered to sufficiently correspond where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope, or

7 PPH Statistics at a Glance USPTO goal for cumulative PPH requests in calendar year 2013: 24,000 Number of requests as of July 31, 2013: New Cumulative Paris-PPH ,115 PCT-PPH 331 7,288 Total ,403 7

8 PPH Program Growth Average number of new PPH requests per month at the USPTO: 2009 = = = = Average to date: 557 8

9 PPH Efficiency Benefits PPH continues to deliver benefits to the offices and users PPH results compared with all cases Paris-PPH PCT-PPH All Cases Grant Rate (Allowances/Total Number of Disposals) 86% 88% 51% First Action Allowance Rate 26% 20% 14% Actions per Disposal

PCT-PPH All Cases Grant Rate (Allowances/Total Number of Disposals)

10 PPH Statistics at a Glance Cumulative Requests by Month 10

11 PPH Statistics at a Glance New PPH Requests by Month-Paris and PCT PPH Combined 11

12 Paris PPH Statistics Paris Route PPH As of: 6/30/2013 Number of requests to participate in the PPH Program Number of these requests that are not eligible because a first action on the merits was mailed before the requests were considered, or cannot be granted because the request has been dismissed twice

eligible because a first action on the merits was mailed before the requests

13 PCT PPH Statistics PCT-PPH As of: 6/30/2013 Number of requests to participate in the PPH Program 7148 Number of these requests that are not eligible because a first action on the merits was mailed before the requests were considered, or cannot begranted because the request has been dismissed twice

14 PPH Program Growth Summary of PPH for CY 2012 Goal for cumulative PPH requests in calendar year = 16,000 Total cumulative number of requests: Paris-Route = 9,257, PCT = 5,250 Total number of requests: Paris-Route = 2,805, PCT = 2,655 = 5,460 Average number of new PPH requests per month at the USPTO = 455 PPH results compared with all cases: o Grant Rate (Allowances/Total Number of Disposals) Paris-Route = 87%, PCT = 92%, All Cases = 50% o Actions per Disposals Paris-Route = 2.3, PCT = 1.6, All Cases =

of new PPH requests per month at the USPTO = 455 PPH results compared with all cases: o Grant Rate (Allowances/Total Number of

15 PPH Cost Savings Benefits Fewer office actions means fewer replies/amendments Assuming reply/amendment of minimal complexity Average Cost Savings per Action = $2086 So For each non-pph application: ($2086/response x 2.6 actions) = $5424 in costs For a Paris-route PPH application: ($2086 x 2.3 actions) = $4798 $626 SAVINGS For a PCT-PPH application: ($2086 x 1.6 actions) = $3338 $2086 SAVINGS Notes: Does not include client overhead savings or local law firm fee savings for response to Action Does not consider fewer RCEs and Appeals (see later slide) Does not consider Fees/Costs for requesting PPH Assumes request fees are equal to savings of client overhead Assumes no government fee (USPTO eliminated fee) Assumes for foreign applicants that the total local and US attorney costs equal the above average of $2086 per action Thanks to Hung Bui and Alan Kasper of AIPLA for compiling cost savings data (Source: AIPLA Report of the Economic Survey, 2011) 15

6 actions) = $3338 $2086 SAVINGS Notes: Does not include client overhead savings or local law firm fee savings for response to Action Does not consider fewer RCEs and Appeals (see later slide) Does

16 PPH Cost Savings Data: Office Actions For replies/amendments of relative complexity Average Cost Savings per Action = $894- $3889 So Non-PPH applications: Min: (2.6 x 2978) = $7743 Max: (2.6 x 3889) = $10,111 Paris-route PPH applications: Min: (2.3 x 2978) = $6849 Max: (2.3 x 3889) = $8945 SAVINGS = $894 - $1166/case PCT-PPH applications: Min: (1.6 x $2978) = $4765 Max: (1.6 x $3889) = $6222 SAVINGS = $ $3889/case 16

6 x 3889) = $10,111 Paris-route PPH applications: Min: (2.3 x 2978) = $6849 Max: (2.

17 PPH Cost Savings Data: After Final Average Added Cost Savings for RCEs and Appeals from Fees Avoided Relevant USPTO Statistics (from prior slide) RCE filing rates: 11% for PPH vs. 31% for non-pph Appeal rates: 0.3% for PPH vs. 2.5% for non-pph Applicable USPTO Fees RCEs - $810 Appeals - $1000 ($500 Appeal and $500 Brief) Cost savings government fees only RCEs on average 20% (31% - 11%) of $810 = $162 Appeals on average 2.2% (2.5% - 0.3%) of $1000 = $22 Total added savings on average = $184 17

5% for non-pph Applicable USPTO Fees RCEs - $810 Appeals - $1000 ($500 Appeal and $500 Brief) Cost savings government fees

18 PPH Cost Savings Benefits: Overall Hypothetical complex case (assumes high end of cost savings ($3889 per action) and avoided RCE/appeal filing) Paris Route PPH Savings: Savings on Action $ 1166 Savings on RCE fees 810 Savings on Appeal fees 1000 Savings on Appeal services 4931 (without oral argument) Total savings = $7907 per application PCT Route PPH Savings: Savings on Action $3889 Savings on RCE fees 810 Savings on Appeal fees 1000 Savings on Appeal services 4931 (without oral argument) Total savings = $10,630 per application 18

Appeal services 4931 (without oral argument) Total savings = $7907 per application PCT Route PPH Savings: Savings on Action $3889

19 PPH Quality Benefits Analysis of 155 First Action Allowances 98% - Examiner recorded a new search 84% - Additional art cited 40% - Examiner amendment and/or interview Serial examination process yields quality, defensible patent rights. 19

Additional art cited 40% - Examiner amendment and/or

20 The Future of PPH PPH is delivering measurable benefits to both IP Offices and the end users through higher allowance rates and fewer communications needed. This translates into concrete savings for the applicants However, we can improve the efficiency and the ease of use of the PPH system 20

21 MOTTAINAI MOTTAINAI - Expanded eligibility by de-linking priority Original Approach: PPH framework based on unidirectional work flow OFF OSF New approach: Eligibility based on available work from any participating office on a patent family member, regardless of order of filing Gives applicants greater flexibility and increase pool of potentially eligible applications OEE OLE 21

22 MOTTAINAI Participating Offices: Pilot began July 15, 2011, now being renewed or in discussions Australia Canada Finland Japan Russia Spain United Kingdom European Patent Office (Joined later, Trilateral Offices only) USPTO 22

23 PPH 2.0 PPH 2.0 Further simplifies requirements to be more user friendly PPH 2.0 retains MOTTAINAI s expanded eligibility by de-linking priority. Eligibility based on work available from any Participating Office, uses OEE OLE concept, if the applications in question are members of the same patent family and the disclosures support the claimed subject matter. Should lead to further reduced costs for applicants while retaining worksharing benefits for the Offices. 23

24 PPH 2.0 Key improvements are: Applicant self-certification of claims correspondence Machine translations of Office actions accepted Examiner use of electronic dossier systems, where available, to access the work done in earlier office Carried over form Mottainai: Claim correspondence will be interpreted and applied as agreed to by the PPPH Working Group (Jan 2011) Participating Offices must allow at least one opportunity to correct a defect in the PPH request 24

25 PPH 2.0 EPO and USPTO began the pilot effective January 29, 2012 USPTO in discussion with other MOTTAINI partners to flexibly implement 2.0 in their offices Including Russia, Korea and Germany 25

26 PPH Agreement Offices Total Agreement Offices with the USPTO = 25 Paris-Route = 18 PCT = 14 Mottainai = 8 PPH 2.0 = 13 26

27 Plurilateral PPH 27

28 Information on PPH Programs USPTO s Website dex.jsp Japan Patent Office s PPH Portal e/t_torikumi_e/patent_highway_e.htm 28

29 Thank you! Paolo Trevisan 29

The Patent Prosecution Highway at the USPTO. Charles Eloshway Senior Patent Counsel Office of Policy and External Affairs USPTO

The Patent Prosecution Highway at the USPTO Charles Eloshway Senior Patent Counsel Office of Policy and External Affairs USPTO 1 Overview PPH in Context Why are we doing this? PPH Background and Basics