The Patent Prosecution Highway programme, known as PPH, has become a quick and effective way of fast-tracking the granting of patents in different countries.
The recent announcement from the European Patent Office (EPO) regarding the launch of a PPH pilot programme with the patent offices of Canada, Mexico and Singapore bring this particular programme back to the forefront. We have already commented on what the PPH programme entails and its theoretical benefits in previous articles: a way of fast-tracking the granting of a patent in one country when a positive patentability opinion has been formed by a patent office in another country with which the first state has signed a PPH agreement.
Different statistics circulating with regard to the PPH programme point to a decrease in the number of official actions, an increase in the ratio of patents granted and in lesser time; in the majority of cases in fewer than 12 months. But putting theory aside and looking at the facts: how reliable are these statistics?
At Clarke Modet & Cº we have supported the PPH programme for some time now, recommending it to those clients who require the patent granting procedure to be fast-tracked in different countries. Up until now it has been shown to be very successful, with 100% of the patents we have requested being granted, and in a shorter timeframe.
Thus, all the PPH requests presented in Mexico, which are based on positive reports issued by the United States Patent and Trademark Office (USPTO), have been successfully resolved within a month of their request, provided that it has been published and the compulsory six-month period has passed for third parties to present their observations. In the United States and in Europe we have also seen accelerated granting of patents, in barely 12 months from the participation request in the PPH programme, using the positive opinion of the Spanish Patents and Trademarks Office (SPTO), in the former case, and the USPTO in the latter.
In general the most common practice for our clients is:
- If the SPTO gives a positive opinion, use it in the United States or Mexico.
- In the event that the positive opinion is from the EPO, use it in the United States.
- If the positive patentability opinion has been issued by the USPTO, use it in Mexico, Spain or the EPO.
With the launch of the aforementioned new PPH programme that the EPO has signed with Canada, Mexico and Singapore that comes into effect in January 2015, the use of positive reports issued by the EPO should be considered for a parallel patent application in Mexico.