A detour onto the Patent Prosecution Highway could be an efficient shortcut

This article was first published on 7th March 2023 at the ManagingIP website.

Offering increased acceleration and accessibility, the Patent Prosecution Highway might be a detour worth taking for many organisations. In the final article of their four-part series, Zacco’s experts assess the pros and cons of this expedited scheme

There are multiple Patent Prosecution Highway schemes and bilateral agreements across the globe, offering efficient access to potential new markets.

The Global Patent Prosecution Highway (GPPH), for example, offers the accelerated processing of an application in almost 30 patent offices across the globe. It is slowly gaining in popularity, particularly as it continues to expand, but it still has some way to go in terms of raising awareness.

Camilla Rendal Nielsen, patent director for Zacco Denmark and Germany, notes: “For some countries and technologies, the GPPH scheme certainly represents an efficient potential springboard into many other international markets. Its usefulness depends on an individual organisation’s patent and market strategy and, as with all things related to IP, there are no guarantees as different patent and trademark offices (PTOs) have different requirements or procedural interpretations.

“An experienced patent attorney should be able to assess where an application might have the most impact, or which countries and technologies have an increased likelihood of success.”

The various PPH schemes have been incredibly successful in speeding up the grant procedure, as well as significantly reducing costs for many of the organisations who have taken advantage of the direct route. It has proven particularly popular in the APAC region but elsewhere, such as in the US, it is largely dependent on the technology involved in the application. All patent offices have complete discretion over what they will grant, and taking the PPH route is no exception, so some technologies are more closely scrutinised than others.

Overall, the PPH schemes are an excellent approach and come highly recommended, but it does depend on many factors, most importantly where you need a grant and how quickly you want to achieve it. Nielsen acknowledges: “An excellent use of the PPH is that the multiple schemes can be used in succession. In theory, you could take an approved application from Sweden or Denmark, use the GPPH route into Japan and, once you have achieved an indication of allowance there, use the IP5 PPH scheme to pursue a grant at the EPO, who are not part of the GPPH scheme.

“Zacco has extensive experience developing application ‘chains’, so we know the most practical routes and deadlines, but it can quickly become very complicated if you don’t know what you’re doing.”

There is very little risk associated with the PPH route, at least no more than an organisation might be exposed to by going through national applications. However, a major caveat would be if the primary granting office makes a mistake in the application process. This would be because any subsequent PPH application might not be reviewed as diligently as it would have been had a direct national application been pursued instead. This scenario is unlikely, particularly if you start with a PTO that has a reputation for thoroughness, but it is still possible.

Another area that has come to the fore is how useful it is for companies seeking investment based on their ownership of patent rights. This is because a single grant can potentially be used to fast-track further grants across the globe. Obtaining a full comprehensive scope of protection will likely require additional investment, and the filing of divisional applications, but for a quick and relatively cost-effective approach, the PPH likely offers the best chance of success.

Many PTOs have an excellent reputation for patent examination, but in terms of which would be most useful, and why, it is very much dependant on an organisation’s strategy. Some offices are more open to the PPH approach, and the opinions of some offices are held in higher regard than others. The EPO, for example, has a stellar reputation, but is only part of the IP5 PPH, not the GPPH, so there are multiple factors to consider.

Tomas Wässingbo, partner and business development responsible for innovation assets at Zacco, suggests choosing based on your intended markets. He says: “As one of Europe’s leading IP firms, Zacco is exposed to many different application processes across the globe. We are headquartered in Copenhagen, so we have a close relationship with the Scandinavian PTOs and particularly the Danish Patent and Trademark Office (DKPTO) and the Swedish Intellectual Property Office (PRV), both of whom have an excellent reputation for quality and thoroughness.

“They collaborate extensively with other IP offices from around the globe, within the PPH framework and outside of it, and they are constantly seeking to expand their bilateral agreements. Both are very open to an informal discussion on the pros and cons of the PPH route, both are PCT authorities – Sweden directly and Denmark via the Nordic Patent Institute – and while the PRV is larger, the DKPTO has a reputation for efficiency and quick responses.

“Time is often a key driver for applicants using the PPH, so it is important to request it before any other offices within the scheme have started their own examinations. A quick patentability assessment and early approval from a reputable patent office means that PPH may be requested elsewhere, prior to the receipt of any office actions from subsequent offices.”

Another thing that separates the offices in Sweden and Denmark from other offices with similar reputations is that both countries operate fluently in English. For international companies, this can significantly speed up the process, as there is no need for a local language translation in the application prior to approval, such as might be required in Germany for example.

PPH schemes are likely going to continue to expand. The approach is here to stay and its reputation will continue to grow as more organisations and more countries realise its potential. For the GPPH, it would be a huge advantage if some of the larger global patent offices, such as the EPO or China for example, were to join the scheme but there is still some hesitation. Obviously, each office can still grant or refuse at their own discretion, so they are not bound by any existing result or grant, but until each office feels confident in the ability of every other member of a scheme then the hesitation to sign up will remain.

Many of the schemes take feedback on board so the processes and frameworks are continually improving. For example, the GPPH previously only considered an allowance in the country of first filing but expanded this a few years ago to allow for allowances in any country to be considered. Amendments such as these have been welcomed by the international patent community.

Simen Svare Kristoffersen, patent attorney at Zacco Norway, points out however that there may be too many schemes, and these can be quite complicated to keep track of. He says: “Different countries have different agreements, some of which cross over, so it is important to know where to start and to follow the most practical approach.

“Generally, the process itself is relatively simple, but some PTOs will be more diligent than others in their examination. It is therefore imperative that any patent attorney using the PPH route ensures that any claims and grants issued in the first instance remain valid according to the local formalities in each subsequent country. Failure to assess this properly could lead to difficulties enforcing rights further down the line.”

Understanding the differences and benefits between the multiple schemes can be a complex task, and much depends on the general patent and market strategy of an organisation as well as the technology under consideration. Obviously the GPPH offers access to more offices, but does not include the largest PTOs, such as the EPO or CNIPA. Similarly, the IP5 counts Korea, Japan, the US, the EPO and China as members, all of whom are major markets but some of which have a limited timespan for when any subsequent applications are filed, which may not suit all patent holders.

While PPH application processes themselves can be relatively straightforward, it certainly pays off in the long run to learn how to navigate the various schemes, or to work with an organisation who knows their way around them.

Zacco has been assisting organisations with understanding and making use of the different PPH routes almost since its inception. We are one of the leading IP firms in Europe, and our prominent Scandinavian presence means we have an open dialogue with local PTOs, which represent an excellent starting point for many PPH journeys.

Zacco’s IP professionals can help your organisation to understand the benefits of each scheme and advise whether the PPH routes could be beneficial, based on your current patent or territorial strategy. Perhaps most importantly, Zacco understands the rules, regulations and deadlines related to global PTOs. As such, we can help you identify the most practical use of the PPH, and any associated country’s bilateral agreements, which could quickly lead you into untapped markets.