Legal Updates

Intellectual Property – PPH – UK and US Patents

A 12 month pilot scheme was launched in September 2007 designed to improve the processing of patent applications in both the United Kingdom and the United States. The pilot scheme is known as the Patent Prosecution Highway (“PPH”). The PPH allows patent applicants to request accelerated examination of their corresponding patent application filed in the other country in the event the applicant has received either:

• An examination report by the UK Intellectual Property Office (“IPO”); or
• An examination report by the United States Patent and Trademark Office (“USPTO”).

The PPH is intended to help both offices in their goal of stimulating and rewarding invention and innovation. The purpose behind the pilot is to establish the level of demand for such a service from applicants. Furthermore, it is intended to quantify the quality and efficiency gains to be expected. The pilot scheme with the USPTO is subsequent to an earlier PPH agreement with the Japan Patent Office (“JPO”). The PPH agreed with the JPO was established in July 2007.

The PPH with the USPTO expands on the idea behind the scheme with the JPO. The PPH agreement between the IPO and the USPTO is very likely to enhance the operational efficiency of both agencies and have the overall effect of improving patent quality.

The agreement will help to efficiently and effectively safeguard the intellectual property rights of successful applicants, as well as help to stimulate innovation on both a national and international scale.

Commentators on the PPH have stated that it is likely it will further enhance the IPO's reputation for delivering a high quality, cost effective service. It is likely that the PPH agreement with the USPTO will raise standards due to the fact that patent users worldwide want offices to co-operate more effectively by reducing duplication of work, speeding up processing, and improving service quality. This has been seen with the PPH between the IPO and the JPO. In order to speed the process up, an examiner in one country will look at the comments made in relation to substantive matters of a patent application made in the other, particularly matters such as novelty and the inventive step. In doing so, it will allow the examiner to expedite the search and examination reports that have to be conducted in every patent application. This therefore means the use of the information from the other country allows an opinion to be made more quickly. In addition to saving time, it is hoped that it will save the applicant money.

The development of work sharing arrangements between the IPO and other national patent offices is one of a number of key recommendations outlined in the ‘Gowers Review of Intellectual Property’ which was published on the 6th of December 2006. That report stated that intellectual property was vital to the UK’s success in ‘the global knowledge economy’ and as such it suggested proposals on a wide range of policy issues concerning the following:

• Copyright;
• Patents;
• Enforcement of rights; and
• IP crime.

It should be noted however that the PPH scheme does not provide any guarantee of the success of any particular application. Any claims will still be reviewed for compliance with the country's own patent laws and as such there is no guarantee that a concept unpatentable in the UK, such as a business method, that has been allowed in the US will be granted.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.