Video summary

Patent Prosecution Highway (PPH)

Main summary

Key takeaways

Educational

Main Ideas / Lessons Conveyed

  • Purpose of PPH (Patent Prosecution Highway): A mechanism to obtain a patent faster in a “later” country by leveraging search and examination results from an “earlier” country.

  • Core premise: If at least one claim in an earlier-country application has been allowed (or received a positive patentability ruling), the applicant may request accelerated examination in the later-country application using that earlier work.

  • Named offices and terminology:

    • OEE = Office of Earlier Examination (earlier country)
    • OLE = Office of Later Examination (later country)

  • Program variants mentioned:

    • Global PPH
    • IP5 PPH

(The lecture notes that differences between them are not required for the exam.)

  • What PPH applies to (and not to):
    • Applies to: most non-provisional utility applications
    • Does not apply to: plant applications, design applications, reissue applications, re-examination proceedings, and applications subject to a secrecy order

Exam-focused note: The lecture states you can expect about 1–2 exam questions on this topic.

Requirements for Eligibility (Detailed Checklist)

To be eligible for the PPH program, there are four requirements:

  1. At least one claim allowed / positive ruling in the OEE

    • The OEE application must contain at least one claim that is:
      • allowable / patentable, or
      • received a positive ruling
    • Meaning: the OEE has determined the claim is novel, inventive, and industrially applicable.

  2. Same earliest filing date or priority date

    • The application filed with the OLE must have the same earliest filing date or priority date as the OEE application.

  3. Substantial examination not started in the OLE

    • Before using PPH, substantial examination must not yet have begun in the OLE.
    • Practical implication from the lecture: no office action has been received yet.

  4. All claims in the OLE request must sufficiently correspond

    • The claims filed with the OLE must sufficiently correspond to the allowable/patentable claims filed with the OEE.

How “Sufficiently Correspond” Is Illustrated (Examples)

Example described: roller skates with varying dependent features

  • OEE application

    • Claim 1: “roller skate with 4 wheels”
      • This claim is allowed.

  • OLE application (Requirement #4 evaluation)

    • Claim 1 (OLE): “roller skate with four wheels”

      • Because its scope matches the same scope as OEE Claim 1, it is considered to sufficiently correspond → meets requirement #4.

    • Claim 2 (OLE): “roller skate as mentioned in Claim 1 … comprising a buckle”

      • This is a dependent claim on OLE Claim 1.
      • Since the dependency ties it to the claim scope that corresponds to OEE Claim 1, it is considered to sufficiently correspond → Claim 2 also meets requirement #4.

  • General rule stated in the example: Claims in the OLE may be narrower than the OEE claims as long as the narrowed claim is dependent on a claim that is of the same scope as the corresponding OEE claim.

Speakers / Sources Featured

  • Course / lecturer (not named in the subtitles)
  • MPEP Chapter 708 (referenced as a source of a “short paragraph” about PPH)
  • Source material number 5 (referenced as a five-page PDF containing most exam-relevant details)
  • MPEP (Manual of Patent Examining Procedure) as an authority (via the mention of Chapter 708)

Original video