Global Patent Prosecution Highway Programme

Speeding up the process of examining patents

Patent prosecution is the examination process that follows the filing of a patent application. People sometimes confuse patent prosecution with patent litigation, which is legal action on the infringement of patents. Patent prosecution is the process of seeking protection for an invention by applying for a patent from a patent office.

The Global PPH is a plurilateral pilot programme. It aims to reduce the time it takes for applicants to obtain patents in their key markets and to increase efficiencies between patent offices.  An arrangement between 27 Intellectual Property offices includes an option to accelerate patent examination based on a favourable outcome in any of the other participating offices. The programme does this by relying on the search and examination already carried out by another patent office to reduce duplication of effort.

This case study shows how patent offices around the world have cooperated to improve the quality, efficiency and predictability of patent prosecution after the failure of harmonisation efforts through a multilateral treaty process.

Lessons from a project that focused on a simple mechanism

It is not easy to implement a multilateral mechanism - even to solve a procedural problem - without building trust and confidence between the regulators involved. This is especially so in an area as technically complex as patent examination.

Start with simple mechanisms

The Global PPH shows that it is sometimes better to slowly build a network of connections using simple mechanisms so that it is accessible to users, and then to consolidate these into a more global scheme.

Perceived loss of sovereignty can be a stumbling block

Is the perceived loss of regulatory sovereignty warranted or not?

In the case of the Global PPH, the fact that each patent jurisdiction retains the power to grant or not grant patent applications has been a key feature in regulators accepting the scheme.

Multilateral cooperation without a formal treaty

The Global PPH shows that a formal multilateral treaty is not necessary for the global intellectual property regime to evolve.

The success of the Global PPH is based on the fact it focuses on procedural consolidation rather than substantive reform. A significant feature has been that, while there is a sharing of knowledge and work, the ultimate decision on whether to grant a patent rests with the individual patent jurisdiction based on local laws and jurisprudence.

International patent law is complex and patent volumes are growing

One of the major challenges in global patenting is the administrative impediments and redundancies that arise at the filing stage of patent applications and throughout the patent prosecution process. The costs tend to be prohibitive and patent offices are seen to be either too slow in processing applications or not well suited to dealing with sectors that have short innovation cycles. This challenge has been compounded by:

• the greatly increased number of states (157) actively encouraging a strong patent regime and joining the Patent Cooperation Treaty over the past 2 decades.
• the number of patent applications worldwide.
• the need for speed to capitalise on patentable inventions because of the impact of the internet on knowledge transfer.
• most countries opposing harmonisation as it would reduce their ability to tailor their patent laws to suit their particular economic and social circumstances.

Efforts to harmonise patent law date back to 1883

The Patent Cooperation Treaty (1970) made it possible to seek patent protection for an invention simultaneously in a large number of countries by filing an ‘international’ patent application. It now has 157 contracting parties.

The latest effort, the Patent Law Treaty (PLT), focused on harmonising processes for national and regional patent applications. It was concluded on 1 June 2000 by 53 states and the European Patent Organisation (an inter-governmental organisation), but the Treaty has entered into force in only 43 contracting parties.

The USA, Japan and the European Patent Office are parties to the PLT but the other 2 of the top-5 patent jurisdictions – China and South Korea – are either not parties to the Treaty or are yet to ratify it. International patent harmonisation is desirable for large net technology exporters but can result in a higher cost for smaller economies.

Collaborating for efficiency

In the absence of a working international framework, the world’s leading patent offices and filers came together to push for efficiencies and positive changes in global patent prosecution. This led to the Patent Prosecution Highway (PPH) initiative.

Under the PPH initiative over 30 patent offices, including most of the top 10 intellectual property jurisdictions, signed arrangements with each other so that the work of one patent office (the office of first/earlier examination) could be used to expedite or accelerate examination in the other patent offices (office of subsequent/later examination).

A significant feature of the programme was that, while search and examination reports are shared and reused among the member offices, the ultimate decision on whether to grant a patent rests with the national or regional offices according to their respective local laws. It did, however, involve recognition and reliance on the examination process and reports of another patent office to support the decision about whether or not to grant a patent under domestic law.

The PPH initiative underwent several iterations to ensure these various bilateral agreements were similar. But there were still variations in legal and procedural requirements which meant the PPH was seen by some as being unnecessarily onerous and convoluted.

Starting as a network of successful bilateral arrangements

As the concept behind these arrangements was shown to lower costs for applicants and save time for over-stretched patent jurisdictions, there was general consensus that a plurilateral agreement would achieve even better outcomes by streamlining the inconsistencies between the various bilateral agreements.

Progression through bilateral agreements to a plurilateral agreement was a necessary step. It allowed various patent jurisdictions to acquire in-depth knowledge of each other’s systems and processes, building confidence in each jurisdiction’s technical skills and competence.

The Global PPH is a logical and useful successor to the original PPH scheme bringing together a significant number of the medium and large patent jurisdictions. There are notable absences including the European Patent Office, Intellectual Property India and the State Intellectual Property Office China. This limits its overall effectiveness. Data also indicates that the Global PPH has proven more effective in some countries than in others in the amount of time taken to process a patent application.

The Global PHH addresses one of the key barriers to patent application. It is a relatively inexpensive way for an applicant to use the early examination process of one application to accelerate proceedings in other jurisdictions where the process is slower or the backlogs are greater. Although the Global PPH opens up many options for accelerating the examination and grant of a patent, the way it is designed (including which countries are involved) means that applicants need to be strategic about where and when to apply.

References and sources

Global PPH and IP5 – Latest Iteration in the Patent Prosecution Highway [PDF, 80 KB](external link) — Banner & Witcoff Intellectual Property

Global Patent Prosecution Highway(external link) — New Zealand Intellectual Property Office

PCT – Patent Prosecution Highway Pilot (PCT-PPH and Global PPH)(external link) — World Intellectual Property Organization