Prosecution highway drives filing efficiencies but hinders claim flexibility

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The Patent Prosecution Highway is gaining popularity because of its cost-saving benefits, but it is not always the right tool for the job, according to in-house counsel

The Patent Prosecution Highway (PPH) has become a more popular tool with businesses as a means of driving filing efficiencies, but the system still falls short in certain circumstances and for some companies, according to in-house sources.

Lawyers and patent managers at five companies tell Patent Strategy that they have all used the system, which was set up to provide accelerated patent prosecution by allowing participating patent offices to benefit from work already done by other offices.

They agree that the system is best used when the company is prosecuting a patent in multiple jurisdictions where there are few differences in prosecution style. Some point out, however, that the efficiency rate can vary significantly depending on the agreement struck between participating offices. 

They add that the highway also hinders their ability to claim for broader or narrower patents in different jurisdictions, thereby limiting claim flexibility

Most sources say that the highway has helped them save money in at least a few instances by making international prosecution faster and more efficient.

The head of IP at a European factory-tech company, who is a strong advocate of the PPH, says that his company has been using the system for almost two years and has had huge successes as a result in jurisdictions such as Canada.

“We filed a PPH request and got a patent in two weeks,” he says. “Normally for patents you’re talking months or years, so two weeks is very fast.”

He adds that the business has since changed its internal processes to use the PPH in the most effective way possible. The company conducted a study of its projected savings from PPH use and determined that it could save between 10% and 15% of the money it spends on prosecution.

The counsel says that on looking at his budget spend, he determined that he had spent less money than projected. He tells Patent Strategy that he is unsure about how much of a part the PPH played in reducing that spend, but suggests that it will likely be significant.

“The prosecution process can be very long and expensive. An examiner reviews an application and it goes to and from them to a patent attorney several times before it is granted. Just the number of letters that an attorney sends and translates amounts to several thousand dollars.”

It would not be surprising therefore if the PPH had a big part to play in the patent department’s recent cost-savings.

Balu Gupta, patent counsel at material solutions company Promerus in the US, agrees that the PPH is an excellent tool, adding that more patent departments are realising the benefit that can be reaped with a more harmonised prosecution process. 

“The PPH is becoming popular because people are realising that harmonisation is more efficient and better for litigation, should that arise,” he says. “You do not want a different patent scope issued in different jurisdictions so that one gets knocked off and others have same vulnerability.”

But Chee Zhuo, senior IP manager at chemicals company BASF in New York, says her company has tried using the PPH for some cases and not found the system to yield many benefits for its prosecution strategy.

“The PPH has some pros and cons,” she says. “We tried to save costs with the system when it was first rolled out, but the realities are that some patent offices still do their own searches and issue rejections independently.”

She explains that some offices, such as the JPO, often go through their normal examination process and do not use the work previously done by certain other offices, as they are supposed to do under the highway system.

A number of bilateral agreements have been signed between patent offices to form the PPH. Applicants can request that their filings be processed under these agreements, although the decision on whether to grant a patent remains under the control of national or regional offices.

The scheme was introduced among several patent office in 2011.

My way or the highway

John Marcus, head of IP for biotech company Insmed in New York, says his company has used the PPH on occasion and that it has been beneficial where a patent application has been successful in one jurisdiction and the company wants that registration to be granted quickly in other places.

“Typically it goes through without a hitch,” he says.

“I have not seen a case where an examiner has gone against the first allowance. Perhaps they have in other cases, but not that I’ve ever experienced.”

He adds that the system is becoming more popular because it has been validated by others over the past eight years. He points out that other businesses previously may have not been aware of the system or did not think it was worth pursuing.

But Marcus says that the PPH is not as useful in situations where the business wants to get a broader patent in a different jurisdiction where it is not operating at that point but intends to enter in the future.

“In those situations, it can make more sense to wait and try and get that broader patent down the road,” he says. “If you go there right away with a narrow patent, you might have to file a divisional and then you double your costs in prosecuting the patent all over again.”

He adds that there are also maintenance fees to consider, and those combined with the costs of prosecuting multiple patents would represent a considerable chunk of a patent department’s budget.

Anna-Lisa Gallo, head of IP at water technology company Lixil in the US, says she agrees that the PPH is useful when the business wants to push a patent through multiple jurisdictions for less money and it falls short when it comes to patent claim flexibility.

“You don’t necessarily want to just mirror between jurisdictions,” she says. “A big gripe of mine is when external counsel suggest that you simply mirror the claims of a successful application from one jurisdiction to another.

“But if I can get more out of a different country, I will try to get more.”

She adds that businesses can always file for continuations, and that whether a business decides to use the PPH should come down to the patent strategy it wants to follow for a particular product.

If the business is filing for a defensive patent and has no activity in the area that it covers, for example, it might make more sense to determine which claims the business wants to capture, and in which regions, rather than use the PPH.

The PPH is becoming increasingly popular among in-house counsel looking to speed up their filing strategies to save money and get protection in multiple jurisdictions faster.

However, it is not always the right tool for a registration if a company wants greater flexibility over the claims that it submits to different jurisdictions.