Driving Carefully on the PPH

As of January 29, 2011, the U.S. Patent and Trademark Office (USPTO) and the Canadian Intellectual Property Office (CIPO) have fully implemented the Patent Prosecution Highway (PPH) program on a more or less permanent basis. Under the PPH, an Applicant, who is in receipt of a decision from one Patent Office that at least one claim in a patent application is patentable, may request that the other Patent Office fast-track examination of corresponding claims in corresponding applications. Currently, neither the USPTO nor the CIPO charges an additional fee for participating in the PPH program. The apparent intent of the PPH is to provide an attractive route for rapidly obtaining patent protection, while reducing Patent Office workloads.

However, in some cases the PPH may not be the most appropriate means for obtaining patent protection. For example, under current USPTO restriction practices, one may be required, under certain conditions, to restrict claims to one category only. For example, it often happens that, in an application containing claims to both a method and an apparatus, a restriction requirement is issued to the effect that only the method claims or apparatus claims are to be pursued in that application. One approach to dealing with such a requirement is to elect one category of claims for prosecution in the current application, while making the other category or categories the subject of one or more divisional applications.

On the other hand, under CIPO unity of invention practices, claims to the same invention but in different categories should be pursued together in the same patent application. Therefore, when making a PPH request at the CIPO on the basis of U.S. prosecution, one may wish to wait until claims in all the desired categories have been deemed allowable at the USPTO. This may require waiting until multiple divisionals have been prosecuted to a sufficient state of allowability at the USPTO. (The PPH does allow a PPH request to be made on the basis of multiple USPTO applications, provided they are all in the same family.) Since the PPH request timing depends on progress of the slowest application at the USPTO, this may result in a time delay that can partially or fully defeat the benefits of the PPH.

As an alternative to the PPH, if quicker examination at the CIPO is desired, one can in many cases request the advance of an application for examination under Section 28 of the Patent Rules for a fee of $500. Currently, one can also request that the prosecution of applications related to environmental (green) technologies be accelerated, free of charge.

By Michael Maskery