Service

US Patent prosecution Highway (PPH) petitioning

This legal service is for us to  prepare, file, legally argue, and manage the Patent prosecution Highway (PPH) petitioning process.   

Patent Prosecution Highway (PPH) - Fast Track Examination of Applications:

When (if) your claims were (are) allowed in the US, we can much more likely, and cheaply, win you a favorable preliminary examination demand opinion then you can do PPH (based on the US and/or PCT)

PCT Examiners are usually much fairer and laxed compared to the US.  So, if we can win you a favorable preliminary examination demand opinion in the PCT process, (or if you already have a sufficiently favorable search opinion) then you can do a PPH petition request.

That is, when your claims are deemed allowable in the PCT process, we can usually much more likely, and cheaply, win you a US Patent allowance via PPH (based on the PCT), and not only force approval in all the other associated countries, but it forces expedited examination and approval within around 6 months instead of 1-2 years.  That is, under the PPH program, winning a positive PCT opinion on the claims will normally, in each member country you timely enter, accelerate your getting a 1st office action and subsequent patent allowance on those approved claims to usually be done within 3-6 months (vs the normal 12-24 months), and 90% of the time they are supposed to just accept the favorable PCT prelim examination report opinion finding, and allow the national patent, in the US as well.  Major PPH participants include EU, China, Japan, Korea, and UK. 

Thus, it is almost always a smart move (e.g., far less costly and complicated) to win a favorable PCT opinion and then do PPH before the US (or any other PPH members) issues its 1st OA.  Otherwise, you will have to separately prosecute (e.g., argue/amend claims for patentability) in each country, which not only multiplies your prosecution costs by each country, but can lead to unpredictable/bad results when one country examines and rejects the same claims that another country approved.

To be clear, under rules (as of April 2020) any PPH in the US must be done before a first office action is issued by the USPTO; however, even if afterwards, it usually makes sense to have us amend the US claims to match the favorable PCT claims, prep/file an IDS with the PCT cited prior art, and argue to the Examiner that because the claims were allowed in PCT then, as a PPH member, so that should be favorable for allowance in the US as well.

see the PPH member list here:

Also, see that Mexico has PPH w/ USA:

IP5 Patent Prosecution Highway

Offices participating in the IP5 PPH pilot are:

Information regarding the IP5 PPH pilot programme is available via the IP5 Offices' respective websites:

·         European Patent Office (EPO)

·         Japan Patent Office (JPO)

·         Korean Intellectual Property Office (KIPO)

·         National Intellectual Property Administration of the People's Republic of China (CNIPA)

·         United States Patent and Trademark Office (USPTO)

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