Driving Along the Patent Prosecution Highway

Since 2006, the United States Patent & Trademark Office (USPTO) has been engaged in its own program of globalization. Through agreements with the intellectual property agencies of several countries, the USPTO has implemented "Patent Prosecution Highways" that stretch from the United States to different regions of the world.

The Patent Prosecution Highway program began in July 2006, when the USPTO entered into an 18-month pilot program with its Japanese counterpart, the Japan Patent Office. This program, which graduated from the pilot phase into a permanent program in January 2008, became the model for Patent Prosecution Highways that now run between the United States and many other countries. Since the U.S.-Japan pilot program took effect in July 2006, Patent Prosecution Highways have been "paved" between the USPTO and:

· the United Kingdom Intellectual Property Office (effective September 4, 2007);

· the Korean Intellectual Property Office (effective January 28, 2008);

· the Canadian Intellectual Property Office (effective January 28, 2008);

· IP Australia (effective April 14, 2008);

· the European Patent Office (effective September 29, 2008); and

· the Danish Patent and Trademark Office (effective November 3, 2008).

Each of the Patent Prosecution Highways began as a limited duration pilot, and the Patent Prosecution Highways between the USPTO and IP Australia, the European Patent Office, and the Danish Patent and Trademark Office are still in their respective initial pilot phases. However, the Patent Prosecution Highway pilot between the USPTO and the Canadian Intellectual Property Office has been extended until January 28, 2011, the Patent Prosecution Highway pilot between the USPTO and the United Kingdom Intellectual Property Office has been extended indefinitely, and Patent Prosecution Highway pilot between the USPTO and the Korean Intellectual Property Office became permanent on January 29, 2009.

At this stage you may be asking, "This sounds like a positive development, but what is a Patent Prosecution Highway?" As international commerce grows, patent applicants frequently choose to pursue patent protection in the countries throughout the world in which their intellectual property will be manufactured, used, or sold. Whether through direct filing of patent applications in each country of interest, or through national stage filings based on a patent application under the Patent Cooperation Treaty, the end result of a multi-country patent strategy often is that substantially identical patent applications having substantially the same claim scope are pending simultaneously in multiple countries. Prior to the implementation of the Patent Prosecution Highway initiatives, each country's patent office examined its own version of the patent application in relative isolation, even though it was often the case that multiple patent offices around the world were analyzing their own local versions of the same patent application at the same time and in light of the same prior art references. As the volume of new patent applications continues to outstrip the ability of many patent offices to process such applications, backlogs have grown. The Patent Prosecution Highway initiatives were established as a way to help reduce the backlog of patent applications and eliminate the redundant work of the patent offices of the countries participating in the initiatives.

How does a Patent Prosecution Highway do this? By way of background, patent applications in the United States and other countries generally are first classified into a technology field or "art," and then processed by the designated department ("art unit" in the United States) in the order in which the applications are received. There are exceptions, such as the "Petition to Make Special" rules in the United States, but generally speaking patent offices throughout the world operate on a "first in, first out" basis. The gist of each of the Patent Prosecution Highway initiatives is that a patent application pending in a country at one end of a Patent Prosecution Highway will be advanced out of turn if a corresponding patent application is issued as a patent in the country at the other end of that Patent Prosecution Highway. For example, if a patent application pending in Japan is issued as a Japanese patent, upon satisfaction of certain conditions, examination of its sister patent application pending in the United States will be accelerated.

Depending on your circumstances, a patent filing strategy that takes into account the various Patent Prosecution Highways may prove beneficial. In the USPTO, patent applications in certain technology areas can be pending as long as five years before the USPTO takes any action. Strategic use of the Patent Prosecution Highways may reduce this time and permit your patent to be issued sooner. However, certain decisions you make at the time you file your patent application will affect your ability to take advantage of a Patent Prosecution Highway, so consultation with a patent attorney is recommended prior to adopting a patent application filing strategy.


This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.