Patent Prosecution Highway: Fast Tracking Your Application
Jul 28, 2021
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Learn about the benefits and options for expediting the patenting process, including the Patent Prosecution Highway (PPH). Discover strategies for fast-tracking applications and the advantages of a focused approach. Understand the concept of PPH, its agreements, and forms for specific countries. Explore the process of filing patents internationally and the differences between the PCT pathway and direct filing.
The Patent Prosecution Highway (PPH) allows applicants to expedite the patenting process by relying on the work product of participating patent offices, resulting in faster disposition and potentially higher grant rates in many countries.
Different options for fast-tracking patent applications include accelerated examination, track one expedited examination, and the PPH, each offering varying degrees of speed and cost-effectiveness, requiring strategic claim drafting and consideration of specific application needs.
Deep dives
Overview of the Patent Prosecution Highway
In this podcast episode, the panel discusses the Patent Prosecution Highway (PPH) and its role in expediting the patenting process. They explain that obtaining a patent can be a lengthy process, taking 2-5 years or even longer. However, there are options available for fast-tracking applications. The PPH allows applicants to rely on the work product of participating patent offices to expedite prosecution in other jurisdictions. By sharing priority dates and at least one allowed claim, applicants can benefit from accelerated processing without additional fees. The panel also highlights the eligibility criteria and provides insights into the benefits and considerations of using the PPH.
Options for Fast-Tracking Applications
The podcast explores various options for fast-tracking patent applications. For international applications, applicants can request early examination, depending on the country. Accelerated examination is another option where applicants pay for expedited processing. The panel discusses the advantages and risks associated with accelerated examination, as it requires detailed prior art disclosure. Track one expedited examination is also mentioned, allowing applicants to pay an additional fee for a guaranteed final disposition within one year. The panel emphasizes the importance of strategic claim drafting and the potential cost-effectiveness of each option.
Comparison of Fast-Tracking Options
The podcast provides a comparison of the fast-tracking options available for patent prosecution. Track one expedited examination guarantees a final disposition within one year, while accelerated examination may have quicker results by presenting a fully baked package of claims. The patent prosecution highway (PPH) allows applicants to utilize the search and examination results from a participating office, and the panel suggests choosing PPH based on the country's disclosure and clarity requirements. They discuss the cost and complexity considerations for each option, and recommend assessing the specific needs and goals of each application.
Benefits and Considerations of PPH
The panel highlights the benefits and considerations of using the patent prosecution highway (PPH). They mention that PPH can result in a higher grant rate and faster disposition in many countries. However, they caution that divergent parameters in different countries may weaken the rights if comments from examiners lead to claim amendments. The panel also mentions that PPH is cost-effective in terms of fees but may require additional preparation work depending on the relationship between the allowed claims and the claims being pursued. They discuss the importance of maintaining claim focus and suggest that PPH can lead to more rapid and focused prosecution.
Getting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you need it fast. Luckily, there are some options for fast tracking your application.
In today’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion along with our all star patent panel, exploring one of these options – the Patent Prosecution Highway (PPH) and how it can significantly speed up prosecution between international jurisdictions with similar policies.
Ashley is joined today by an exceptional group of IP experts including:
* Steve Stupp, Partner at Stupp Associates, LLC. * David Jackrel, President of Jackrel Consulting * Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting * Dominic Filice, Patent Expert at Parola Analytics, Inc.
As was the case with the last episode, our discussion panel really jumps right into the thick of the material and in retrospect we thought it might be helpful for the not yet IP experts out there to set the table a bit. I sat down again with Ashley for a brief conversation to help set the stage for what the patent prosecution highway is, how it fits into the patenting process, and when it might make sense for you. We discussed:
* Real numbers on how long it takes to get a patent under normal circumstances without an expedited path. * Options for skipping in line and fast tracking your application when you need to move more quickly (U.S. and International options). * Benefits, risks, costs, and relative time implications for PPH, Track One Prioritized Examination, and Accelerated Examination.