docketing@steinip.com
By Lily Fernandez
The Patent Prosecution Highway (“PPH”) is a result of agreements between patent offices around the world as an attempt to streamline the process for applicants who want protection internationally. The PPH is an international program designed to expedite the examination of a patent application in one jurisdiction by leveraging favorable examination results from another.[i] 
The process begins when an applicant receives a decision from a participating patent office indicating that at least one claim in the application is patentable.[ii] This office is referred to as the Office of Earlier Examination (OEE). The applicant may then request accelerated examination of a corresponding application in a second participating office, known as the Office of Later Examination (OLE), by submitting the approved claims from the OEE.[iii]
In order to qualify, the claims submitted to the OLE must closely correspond in scope to those found patentable by the OEE. By relying on the work already completed in the OEE, the PPH potentially reduces examination timelines and can improve efficiency and consistency in securing protection across multiple jurisdictions.
The main benefit of the PPH is its cost-saving advantages. The PPH was designed to streamline the costs associated with applying for a patent in multiple countries. There are no added fees associated with the PPH program; applicants must only pay the fees for the patent applications themselves. Additionally, a decision on a PPH petition is typically provided within two months of filing. If PPH status is granted, the USPTO typically issues the first substantive office action within two to five months.[iv] The harmonization created by the PPH program then creates more efficient prosecution, ultimately resulting in allowance rates for patents to be ten percent higher for patents in the PPH program.[v]
While the PPH offers clear benefits such as reduced costs, faster examination timelines, and improved allowance rates, it also presents limitations. The primary limitation is the restriction on amending claims. Under the PPH, applicants may only submit claims that closely match those previously allowed by the OLE, limiting the applicants’ ability to pursue broader protection or substantially revise their applications.[vi] While the PPH is a valuable tool for efficient international patent prosecution, it may not be the best fit for applicants seeking greater flexibility during examination.
References
[i] European Patent Office, Patent Prosecution Highway (PPH), https://www.epo.org/en/applying/international/patent-prosecution-highway.
[ii] United States Patent and Trademark Office, Patent Prosecution Highway (PPH) – Fast Track Examination of Applications, https://www.uspto.gov/patents/basics/international-protection/patent-prosecution-highway-pph-fast-track.
[iii] Id.
[iv] Magdalena Cilella, Efficiency v Flexibility – The Patent Prosecution Highway (PPH) Program’s Pros and Cons, Crowell, https://www.crowell.com/en/insights/publications/efficiency-v-flexibility-the-patent-prosecution-highway-pph-programs-pros-and-cons-publication#:~:text=The%20PPH%20can%20often%20streamline,patents%20in%20the%20PPH%20program.
[v] Id.
[vi] Id.