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Considerations for Utilizing the Global Patent Prosecution Highway

The Global Patent Prosecution Highway (GPPH) is a mechanism that may be utilized to reduce prosecution costs. The GPPH promotes prosecution efficiency by allowing an Examiner to utilize previous search and examination results from another participating office, thereby reducing workload and duplication of effort. An applicant that receives either a positive PCT written opinion or a positive examination from a participating office may request accelerated examination under the GPPH in another participating office. Currently, participating patent offices include those in Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, the Nordic Patent Institute, Portugal, Russia, Spain, Sweden, United Kingdom, and the United States.

Applications may be eligible for accelerated prosecution under the GPPH so long as:

  1. Applications filed in participating offices share a common earliest priority or filing date;
  2. The office of earlier examination found at least one claim allowable;
  3. Each of the instant claims “sufficiently corresponds” to at least one of the claims found allowable by the office of earlier examination; and
  4. GPPH examination is requested before substantive examination of the application has started.

The GPPH and other Patent Prosecution Highway programs have provided numerous benefits to applicants including reduced prosecution times and increased allowability rates. For instance, from 2012-2014 GPPH applications at the USPTO had an average allowance rate of 88.0% in comparison to 58.9% for non-GPPH applications.1 In the same period, GPPH applications had an average 1st office action allowance rate of 22.1% in comparison to 12.9% for non-GPPH applications.2 GPPH examination has also reduced total pendency of applications (e.g., 14 months in comparison to 31 months for non-GPPH applications in 2013), and reduced the total number of Office Actions (e.g., 2.91 in comparison to 3.72 for non-GPPH applications in 2014). These benefits are particularly appealing considering that no fee is required by the USPTO for examination under the GPPH.

However, the GPPH is not without its drawbacks. In requesting the GPPH, an Applicant must show that the claims “sufficiently correspond” to those found allowable in the previous examination. A claim is considered to sufficiently correspond where the instant claim is of the same or similar scope as an allowable claim in the previous application.3 Claims directed to a different category (e.g., process or product) than the claims indicated as allowable do not sufficiently correspond. For example, the rules explain that product claims do not sufficiently correspond to process claims, even if the product claims are dependent on sufficiently corresponding process claims. GPPH also imposes restrictions on what amendments can be made if the initial claims are not found to be allowable. In response to a non-favorable office action, the applicant may present arguments and amendments as normal. However, any amended claim must still “sufficiently correspond” to one or more allowable claims from the previous examination. Any amendments that would create non-corresponding claims would not be entered and would be treated as a non-responsive reply. It may be possible to add additional limitations from the specification (if available) to overcome prior art. However, an applicant may not be able to remove extraneous limitations that do not assist to overcome the cited art if the limitations are included in the allowable claims from the previous Examination. Accordingly, use of the GPPH may not result in the broadest possible claims.

The decision whether to request GPPH accelerated examination should be made on a case-by-case basis –weighing improved grant rates and pendency under the GPPH against the probability that valuable subject matter may be left unclaimed.

We invite you to contact us for more information and other assistance when considering a global prosecution strategy for your next application.

© Crawford Maunu PLLC. All rights reserved. This material is for informational purposes only and should not be construed as legal advice. Also, as this material was prepared by individuals and not prepared by Crawford Maunu PLLC acting on behalf of any particular client/factual situation, this material should not be construed as providing a specific position applicable to any legal matter. Communication of this material is not intended to establish an attorney-client relationship. Legal advice should be sought from legal counsel.

1. (GPPH/Non-GPPH 1st action allowance: 23/11 (2014); 19.9/13.3 (2013); and 24.4/14.4 (2012)).

2. (GPPH/Non-GPPH allowance rates 86.3/71.8 (2014); 90.3/53 (2013); and 92/52 (2012)).