The Patent Prosecution Highway: An Underused Road to Global IP Rights
A USPTO Hour highlighted the PPH and ways patent applicants are using it.
The landscape of global intellectual property (IP) protection is constantly evolving, presenting both opportunities and challenges. A recent USPTO Hour discussion shed crucial light on a powerful tool: the Patent Prosecution Highway (PPH).
The PPH program stands as a testament to international cooperation, offering a streamlined path to accelerate patent examination across participating offices worldwide—even if it is underused and likely underappreciated.
The official USPTO webinar featured esteemed speakers Stefanos Karmis, Acting Deputy Commissioner for Patents, and Michael Neas, Acting Director of the International Patent Legal Administration, who provided a comprehensive overview of PPH's benefits, operational mechanics, and strategic implications.
The Essence of PPH: Accelerating Global IP Rights
At its core, the Patent Prosecution Highway is a work-sharing initiative designed to expedite the examination process for corresponding patent applications filed in participating intellectual property offices.
As explained during the USPTO Hour, PPH "essentially allows applicants who receive a determination of allowable claims in an application and one participating IP office [to] obtain fast-tracking examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office."
This mechanism leverages the work product of a "first patent office" (referred to as the Office of Earlier Examination, or OEE) where at least one claim has been deemed allowable.
The benefits of PPH are multifaceted, extending to both applicants and patent offices. For applicants, the primary advantage is the acceleration of IP rights acquisition in foreign markets.
This can be particularly vital for earlier enforcement of IP rights and seizing commercialization opportunities. By leveraging an already allowed claim set, applicants can also improve consistency across jurisdictions and potentially lower patent prosecution costs.
Patent offices, in turn, gain significant efficiencies. As Michael Neas articulated, "The offices that participate are able to gain efficiencies by leveraging each other's work". Applications submitted via PPH are often in "better condition for allowance," aiding examiners and contributing to reduced pendency times.
Key Figures Steering the PPH at the USPTO
The successful administration and evolution of the PPH program at the USPTO are overseen by dedicated professionals. Stefanos Karmis, currently serving as the Acting Deputy Commissioner for Patents, provides executive oversight for divisions involved in international IP cooperation, harmonization, and outreach.
His career at the USPTO began in 2002 as a patent examiner, progressing through various leadership roles including Director of the Office of International Patent Legal Administration and Director of the Office of Patent Quality Assurance.
Michael Neas is the Acting Director of the International Patent Legal Administration (formerly PCT Legal) at the USPTO. His staff plays a crucial role in educating and assisting the patent community, developing policy, and resolving legal issues related to the Patent Cooperation Treaty (PCT), the Hague Agreement, and other international cooperative patent projects, including PPH.
They also manage the PCT Help Desk, which handles over 25,000 calls annually, and decide petitions to the Commissioner in PCT and U.S. national stage applications. Michael Neas joined the USPTO in 1989 as a patent examiner and has been extensively involved in international meetings and projects such as PCT Reform and IP5 Cooperation.
The Diverse Landscape of PPH Agreements
The PPH program, which began in 2006 as a bilateral agreement between the USPTO and the Japan Patent Office (JPO), has experienced dramatic growth and now boasts agreements with "almost 40 other offices around the world."
The USPTO participates in three main types of PPH agreements:
Global PPH: Launched in 2014, this program includes numerous participating offices worldwide. A key advantage of Global PPH is the standardized, single request form and common rules for all participating countries, making the process more efficient for applicants.
IP5 PPH: Also initiated in 2014, this program specifically includes all five major IP offices (the European Patent Office (EPO), JPO, Korean Intellectual Property Office (KIPO), China National Intellectual Property Administration (CNIPA), and USPTO). Like Global PPH, it utilizes the same simplified request form, further streamlining the application process. The IP5 PPH pilot program has been extended through January 5, 2026, with the EPO even extending it permanently for requests filed in their office.
Bilateral PPH Agreements: In addition to the Global and IP5 pilot programs, the USPTO maintains individual PPH agreements with eleven other Intellectual Property Offices not yet included in the broader programs. These agreements often require specialized forms unique to each country pairing. Recent bilateral agreements and extensions highlighted include those with Bahrain, France, Morocco, Malaysia, and Saudi Arabia. Brazil's INPI will transition from a bilateral agreement to participating in the Global PPH pilot program effective July 6, 2024.
The PPH Request Process: Requirements and Fees
Filing a PPH request involves specific requirements designed to ensure the integrity and efficiency of the fast-track examination process. Crucially, there is no fee associated with PPH programs. To request accelerated examination under PPH, applicants must:
Receive an allowable claim determination from an Office of Earlier Examination (OEE). This positive examination report can stem from a national or regional application, or a PCT Written Opinion or International Preliminary Report on Patentability.
Submit a PPH petition form to the Office of Later Examination (OLE).
Provide several required documents, including a copy of the most recent office action prior to the decision to grant a patent (or the immediate work product in a PCT application).
Include necessary translations of the work product.
Furnish copies of priority documents.
Submit office-specific documents, such as the required form for the USPTO.
A cornerstone requirement is that the claims in the PPH request "must correspond to the allowable claims from the office of early examination." This means they "must have a similar or same scope of claim" and, at the USPTO, "have to be the same category of claim."
While narrower claims are acceptable, introducing new limitations from the description not found in the original claims can take the claim "out of correspondence," though examiners are encouraged to be flexible to facilitate compact prosecution if the amendment makes the claim patentable. However, transforming use claims (e.g., from Europe) into method claims in the US is generally not considered "corresponding" for PPH purposes, as the search scope often differs.
It is important for applicants to use the newer PPH forms modified since October 2022, especially for U.S. national stage applications under 35 U.S.C. 371. Failing to expressly request to begin national stage processing under 35 U.S.C. 371(f) when using older forms can delay processing until the 30-month priority period expires, even if the PPH request is granted.
In September 2023, only 50% of applicants submitting 371 applications used the updated form, highlighting a critical area for improvement. The PCT Helpdesk is available for questions regarding PPH and 35 U.S.C. 371 applications.
PPH Performance: Accelerating Examination and Global Leadership
The PPH has proven to be an effective strategy for accelerating examination both domestically and abroad. In calendar year 2024, over 31,405 PPH requests were filed worldwide.
The USPTO stands out in several key performance metrics:
Global Usage: "U.S. applicants use PPH globally at highest rate; USPTO selected as OLE most often". This underscores the significance of the U.S. market and applicants' desire to quickly secure IP rights.
Office of Earlier Examination (OEE) Predominance: The USPTO's work product is "used most often for PPH worldwide," indicating that U.S. examiners' findings frequently serve as the basis for accelerated examination in other countries. In 2024, USPTO was the OEE for 10,907 (35%) of PPH requests among IP5 offices.
Office of Later Examination (OLE) Activity: The USPTO also leads as the OLE, receiving the most PPH applications globally. In 2024, USPTO received 8,590 (27%) of PPH requests among IP5 offices. This signifies the appeal of the U.S. market for fast-track examination.
When comparing average non-PPH first action pendency to PPH first action pendency, the acceleration is clear. For example, in 2024:
USPTO: PPH applications received a first action approximately 5.7 months faster than non-PPH applications.
JPO: A 6.8-month faster first action.
KIPO: Over 13 months faster.
CNIPA: Over 11 months faster.
Despite these impressive accelerations, PPH applications represent a small fraction of total filings at the USPTO—less than 2% of total serialized applications in 2024. These applications tend to be in "better condition for allowance" due to the prior work performed by the OEE.
The USPTO reported a high overall allowance rate for PPH applications, fewer Requests for Continued Examination (RCEs), and fewer continuing filings, all contributing to significantly lower disposal pendency (about half) compared to non-PPH applications.
The grant rate for PPH petitions at the USPTO stands at 81%, with decisions typically issued within 29 days.
"PPH eXtra": Enhancing Predictability
Recognizing user feedback regarding inconsistent timeliness in PPH offices, the USPTO and JPO launched "PPH eXtra" (PPH Improvement Initiative) in January 2022.
This voluntary initiative aims to improve the user experience by making it easier to predict the timing of examination. Participating offices set target deadlines for issuing office actions for PPH applications, focusing on two key timeframes:
Average period from completion of PPH request to first office action on the merits: Target is within three (3) months.
Average period from applicant's response to the first office action on the merits to subsequent office action: Target is also within three (3) months.
Beyond the USPTO and JPO, the Korean Intellectual Property Office (KIPO) joined in August 2023, the China National Intellectual Property Administration (CNIPA) in April 2024, and the Austrian Patent Office (APO) is set to join in July 2025.
According to the webinar, this initiative promotes greater consistency and predictability for applicants worldwide.
Treatment of PPH Applications at the USPTO
Once granted PPH status, applications at the USPTO are fast-tracked and considered "special through prosecution," including appeal and Request for Continued Examination (RCE) practice.
However, the webinar relayed that it was crucial to understand that PPH applications are examined under U.S. law and the same guidelines as non-PPH applications. There is apparently no difference in the thoroughness of examination; the prior work of the OEE simply means the applications often arrive "in better condition for allowance."
Regarding withdrawal from the PPH program, Michael Neas noted that once "on the highway," the only "offramp" at the USPTO is through a continuing application. This typically occurs if an applicant needs to take claims out of correspondence with the allowed claims from the OEE, for instance, by significantly broadening their scope.
Certain types of applications are explicitly excluded from PPH eligibility at the USPTO, such as provisional applications, plant applications, design applications, reexamination applications, and applications under a secrecy order.
Furthermore, an application will not be automatically submitted to PPH, as not all applications are deemed patentable, and applicants may desire to pursue a different, potentially broader, claim scope than what was allowed by the OEE.
The PPH is a strategic choice, not a universal mandate, designed for those who wish to leverage prior positive examination results for accelerated and consistent global patent protection.
Consider Your Options
While the recent USPTO Hour highlighted the significant benefits and successes of the PPH program, a close examination reveals several points that warrant careful consideration and potential questioning by stakeholders.
Here are some insights from the USPTO Hour that merit attention:
Prevalence of Older PPH Forms in National Stage Applications: A September 2023 review indicated that 50% of PPH requests submitted for U.S. national stage applications under 35 U.S.C. 371 used older forms. This can delay processing until the 30-month priority period expires and negate the benefit of accelerated prosecution during that period.
Strict Claim Correspondence for "Use Claims": The USPTO clarifies that transforming "use claims" (e.g., from Europe, common in the pharmaceutical field) into "method claims" in the U.S. context is generally not considered sufficient correspondence for PPH purposes.
Inflexibility Once on the PPH "Highway": Once a PPH request is granted, the case is fast-tracked, and the "only offramp is a continuing application" if an applicant needs to amend claims in a way that takes them out of correspondence with the OEE's allowed claims.
Inconsistent Timeliness as a Driver for Improvement: The PPH eXtra initiative was a direct response to user feedback "expressed some concern with inconsistent timeliness in PPH offices around the globe." While this initiative aims to improve predictability (e.g, a 3-month target), the very existence of this initiative highlights that, historically, even "fast-track" PPH examinations did not always offer the desired level of predictable timing across all participating offices.
PPH's Relatively Small Footprint: Despite its clear benefits in accelerating prosecution and improving efficiency, PPH applications represent less than 2% of the total serialized applications at the USPTO. While there are valid reasons why PPH may not be suitable for every application (e.g., not all applications are patentable, or applicants may desire broader claims than those allowed by the OEE), this low percentage might prompt stakeholders to question whether the program is sufficiently understood or actively leveraged for its potential.
The PPH can potentially offer advantages for those seeking to accelerate global IP protection in many cases. However, astute patent attorneys and inventors will carefully consider these nuances—from form compliance and claim correspondence to the inherent flexibilities and statistical patterns—to ensure they fully optimize their use of this valuable program and mitigate potential pitfalls.
The continuous dialogue and feedback from stakeholders remain crucial for the ongoing refinement and success of such international cooperation initiatives.
The USPTO Hour discussion highlighted the Patent Prosecution Highway as an important tool in the modern IP toolbelt. It provides an optimistic pathway for innovators seeking rapid and consistent patent protection across borders, while simultaneously allowing patent offices to efficiently manage their workloads through international collaboration.
As the program continues to evolve with initiatives like PPH eXtra, its role in facilitating the acquisition of durable patent rights globally only grows stronger, underscoring its enduring value to the IP community.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.