Israel – USA: Patent Prosecution Highway

New Opportunities for Applicants of Israeli and US Patent Applications

On 1 July, 2011 the US Patent and Trademark Office (USPTO) and the Israeli Patent Office (ILPO) launched a one year pilot program, within the framework of the Patent Prosecution Highway (PPH) scheme. The PPH program that applies to certain applications permits an expedited procedure in one country based on at least partial claim allowance in another. Combined with the accelerated examination for priority-establishing Israeli applications announced by the ILPO on 28 November 2010, Israeli and non-Israeli applicants who will file their priority applications in Israel, may use their Israeli application as a springboard for speedier patent prosecution in the USA.

The PPH was originally established through the bilateral agreement between the USPTO and the JPO¹ . The purpose was to permit one Office to base examination of a patent application on a favorable examination conducted by another Office. Following establishment of the PPH by the USPTO and the JPO, additional PPH arrangements were established through bilateral agreements between patent offices and through other arrangements. By way of example, a number of patent offices now permit a PPH scheme on the basis of a favorable examination of at least one claim in a PCT application.

The background for the PPH initiative was that patent offices worldwide find it difficult to cope with their ever increasing workloads and are constantly on the lookout for means to reduce the burden. The idea behind the PPH was to try and reduce duplication of efforts in the examination of counterpart patent applications² by different patent offices. To put it simply, the PPH permits an applicant, who has received a favorable examination outcome in one patent office, to request another patent office that participates in the program to take this into consideration, when examining a corresponding patent application filed there. There are various rules that determine eligibility for acceptance into the PPH program as well as issues of formality relating thereto; but these will not be discussed herein.

The most recent PPH scheme that came into being is the one between the USPTO and the ILPO, recently announced by both these Patent Offices. Under this PPH scheme, an applicant, who has filed a priority application in Israel and received a favorable examination outcome of at least one claim in his Israeli application whereby that claim is considered to be allowable, may request prosecution of the counterpart US application via the PPH route; provided the US application includes at least one claim that is similar in scope to the allowable claim in the Israeli application. Similarly, the PPH route will also be available in the other direction, under similar terms, mutatis mutandis.

This PPH program amounts, among others, to recognition of the highly improved examination standards of the ILPO, which will become 
an International Examination Authority of PCT applications later this year.

This PPH scheme provides a particular opportunity for advancement of examination of a US application. The USPTO recently announced drastic budget cuts which, among others, will likely cause a further increase in delays in prosecution of US patent applications, beyond those experienced hitherto³. However, proceeding via the Israeli-US PPH route may circumvent these delays for eligible patent applications.

On 28 November 2010, the ILPO announced that it will permit accelerated examination of priority-establishing Israeli applications (namely, patent applications that are intended to serve as a basis for a priority claim in subsequently filed applications). With respect to such applications, the ILPO announced its intention that examination will be completed within a period of less than 12 months. The original intention of the ILPO was to provide a cost-effective route for obtaining results of examination that may be used as a basis for deciding on subsequent filing of patent applications, claiming priority from the Israeli application^4. However, the accelerated examination route may also be used as a springboard for the PPH route in the USPTO.

It should be noted that once registration under the PPH scheme is requested, the US application will receive favored treatment and should come up for examination more rapidly. Furthermore, the USPTO statistics show that the rate of allowance of PPH applications, after a first Office Action, is about 25% and the overall allowance rate is about 93%; both of which are double the rate of all other (non-PPH) applications. Accordingly, this option should be favorably considered by Israeli applicants. Additionally, taking advantage of the PPH route is not limited to Israeli citizens or residents, and may be utilized by applicants from other countries.

¹ United States Patent and Trademark Office and Japanese Patent Office, respectively.
² Patent applications that belong to the same patent family.
³ See our May 2011 Newsletter entitled “USPTO – Budget Cuts”.
⁴ It was also the hope of the ILPO to thereby encourage more Israeli applicants to file their first applications in Israel, many of which now file the first application as a US provisional application.