Patent Prosecution Highway

Advantages of the Patent Prosecution Highway for International Patent Portfolios

The Patent Prosecution Highway (PPH) is an international initiative that enables accelerated examination of patent applications through cooperation among participating patent offices. For business owners and attorneys seeking faster intellectual property protection, the PPH is useful tool for streamlining the patent prosecution process.

What Is the Patent Prosecution Highway (PPH)?

The Patent Prosecution Highway (PPH) is a cooperative framework among patent offices designed to expedite the examination of utility patent applications. It consists of a series of bilateral and multilateral agreements that permit applicants to leverage favorable examination results, such as an indication that at least one claim is allowable from one participating patent office (referred to as the Office of First Filing or OFF) to request accelerated examination in another participating office (the Office of Later Examination or OLE).

For example, if an applicant receives a positive examination outcome in a European patent application, they may use that outcome to file a PPH request in the Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), or any other office with a PPH agreement in place. To qualify, the application filed in the second office must sufficiently correspond to the claims found allowable in the first office, and a PPH request must be filed before substantive examination begins.

The PPH significantly streamlines the patent prosecution process by allowing patent examiners in the second office to rely on the prior search reports, written opinions, and examination results from the first office. These shared work products can guide the examiner in identifying allowable subject matter more quickly, often leading to fewer office actions, earlier grants, and reduced costs for the applicant.

In addition to bilateral agreements, the Global PPH pilot program provides a harmonized framework that includes over two dozen participating patent offices, enabling applicants to use a standardized request process across multiple jurisdictions. By allowing applicants to request accelerated processing in OLE offices, the PPH supports faster and more efficient international intellectual property protection.

PPH with PCT Patent Application

PPH programs are particularly useful for applicants filing under the Patent Cooperation Treaty (PCT), as positive written opinions or international preliminary examination reports from the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) can serve as the basis for a PPH request during the national phase.

Objectives of the PPH

The Patent Prosecution Highway (PPH) was developed to address several challenges in the global patent landscape, particularly the redundancy and inefficiencies caused by multiple jurisdictions independently examining similar or identical applications. Traditional patent prosecution often involves waiting for a first office action and responding to multiple rejections. With the PPH, the examination process is expedited, and the number of office actions may be reduced. By fostering cooperation and information sharing among participating patent offices, the PPH aims to create a more streamlined and harmonized international patent system.

The main goals of the PPH include:

• Accelerated examination of patent applications: One of the primary objectives of the PPH is to enable applicants to obtain patents faster.
• Increased efficiency by sharing search and examination results among patent offices: The PPH encourages patent offices to utilize the search reports, written opinions, and examination findings of other participating offices, reducing duplication of effort.
• Improved patent quality through consistent and thorough evaluations: By leveraging examination outcomes from reputable offices, the PPH enhances the consistency and rigor of patentability assessments.
• Reduced workload for patent examiners: Patent examiners can focus their efforts on analyzing unique aspects of an application rather than redoing comprehensive prior art searches and patentability determinations. This allows for more focused and efficient use of examiner resources.
• Cost savings for applicants by minimizing repeated examination: Because the PPH reduces the need for multiple, duplicative rounds of examination, applicants often experience fewer office actions and a more predictable prosecution timeline.

Overall, the objectives of the PPH align with the broader goals of modernizing the international patent system, facilitating foreign trade, and encouraging innovation through faster and more cost-effective intellectual property protection.

How Does the PPH Work?

To use the PPH, an applicant must first file a patent application in a participating office (the office of first filing or OFF). Once that office determines that at least one claim is allowable, the applicant may request accelerated examination for a corresponding application in another participating office (the office of later examination or OLE).

The request must meet certain requirements, such as:

• The later application must correspond to the earlier application.
• At least one claim must be determined to be allowable in the earlier examination.
• All claims in the PPH application must sufficiently correspond to the allowable claims.
• A PPH request must be filed before substantive examination begins.

How to File a PPH Request

Filing a Patent Prosecution Highway (PPH) request requires careful attention to timing, documentation, and jurisdiction-specific rules. Applicants should ensure full compliance with the requirements of the relevant participating patent office to avoid delays or outright rejection. Filing a PPH request typically involves the following steps:

1. Identify an allowable claim in the earlier application: The PPH request must rely on a clear indication of patentability for at least one claim in the earlier application (the application filed with the Office of First Filing, or OFF).
2. Ensure claim correspondence between the earlier and later applications: All claims in the later application (the one filed with the Office of Later Examination, or OLE) must sufficiently correspond to those allowed in the earlier application. This means they must be of the same or similar scope, although minor differences that do not affect the substance of the claims may be permitted. Many offices require a detailed claim correspondence table to demonstrate this relationship.
3. Prepare the required documentation: Applicants must compile and submit a set of documents that support their PPH request. This typically includes:
   • Copies of office actions, written opinions, and search reports issued by the first office that indicate the allowability of claims.
   • Translation of documents if the earlier work products were issued in a language not accepted by the office of later examination.
   • Claim correspondence table that maps each claim in the later application to the corresponding allowable claim in the earlier application. This table should clearly demonstrate that the claims share the same or similar scope.
4. Submit the PPH request and supporting documents to the relevant office: Once all required materials are assembled, applicants must file the PPH request directly with the participating patent office where accelerated examination is sought. Many offices offer electronic filing systems or dedicated forms for PPH requests. The request must be submitted before substantive examination begins.

Applicants should also be mindful of the timing and procedural nuances in different jurisdictions. Some offices may have specific forms, page limits, or electronic filing protocols. Filing errors, such as failing to provide required translations, omitting correspondence tables, or submitting the request after substantive examination has begun, can result in denial of the PPH request.

Types of PPH Programs

There are three primary types of PPH that reflect the sources of prior work products used to support a request for accelerated examination.

• PPH based on national work: This type of PPH program relies on examination results obtained through the national procedures of a participating patent office. If a national patent office issues an office action stating that at least one claim is allowable, the applicant may use that decision as the basis for a PPH request in another office. The key requirement is that the claims in the subsequent application must sufficiently correspond to those found allowable by the first office.
• PPH based on PCT work products (PCT-PPH): Many PPH programs are linked to the Patent Cooperation Treaty (PCT) and permit applicants to base their PPH request on international work products. In particular, a positive written opinion from the International Searching Authority (ISA) or a favorable international preliminary examination report from the International Preliminary Examining Authority (IPEA) can be used to support a PPH request during the national phase. This route is particularly advantageous for applicants seeking protection in multiple jurisdictions via a single international application.
• Global PPH Pilot: The Global PPH is a multilateral framework that harmonizes the procedural requirements across more than two dozen participating patent offices. Unlike traditional bilateral agreements, the Global PPH uses a standardized set of eligibility criteria and documentation requirements, making it more predictable and user-friendly for applicants. Under the Global PPH, any participating office's favorable decision can be used to request accelerated examination in any other participating office. This pilot program has become the dominant format for many applicants due to its broad applicability and streamlined process.

Each PPH type offers unique advantages depending on the applicant's filing strategy, target jurisdictions, and the source of allowable claims. For applicants filing under the PCT, the PCT-PPH route is often the most efficient. For those relying on fast national examination results, bilateral or Global PPH pathways may be preferable. Regardless of the type chosen, all PPH programs aim to reduce redundancy, speed up examination, and improve the predictability of international patent prosecution.

Participating Countries and Offices

Numerous countries and regional offices participate in PPH programs, including:

• United States Patent and Trademark Office (USPTO)
• European Patent Office (EPO)
• Japan Patent Office (JPO)
• Korean Intellectual Property Office (KIPO)
• Canadian Intellectual Property Office (CIPO)
• China National Intellectual Property Administration (CNIPA)
• Intellectual Property Corporation of Malaysia (MyIPO)
• Saudi Authority for Intellectual Property (SAIP)
• UK Intellectual Property Office (UKIPO)

A full list of participating patent offices and their bilateral agreements can be found on the USPTO and WIPO websites.

Differences Among Offices: Flexibility vs. Efficiency

While the Global PPH provides a consistent framework, some patent offices maintain unique procedures or requirements. For example:

• European Patent Office: More stringent on claim correspondence.
• Japan Patent Office: Strong user friendliness and clear guidelines.

Understanding local requirements helps avoid rejection of the PPH request.

The Future of the Patent Prosecution Highway

As international collaboration and demand for streamlined intellectual property (IP) systems grow, the Patent Prosecution Highway (PPH) is poised to evolve significantly. The globalization of innovation, increased cross-border filings, and technological advancements are driving ongoing improvements in the scope and functionality of PPH programs.

Several key developments are shaping the future of the PPH:

• More participating countries and patent offices: The number of patent offices participating in PPH programs is expected to increase as more countries recognize the benefits of harmonized patent examination. Emerging markets and developing economies are particularly interested in joining the PPH to enhance their IP infrastructure, attract foreign investment, and reduce examination backlogs.
• Enhanced electronic filing systems: Digitalization is playing a pivotal role in the modernization of patent prosecution. Patent offices are investing in user-friendly electronic filing portals that support the submission of PPH requests, claim correspondence tables, and prior office actions. These systems are expected to become more interoperable, allowing for better data exchange between participating offices and reducing administrative burdens for applicants.
• Integration with IP5 PPH initiatives: The IP5 offices, the United States Patent and Trademark Office (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and China National Intellectual Property Administration (CNIPA), have already established a collaborative PPH framework among themselves. As this initiative matures, it is likely to influence global best practices and set the standard for high-efficiency, high-transparency examination procedures. IP5 cooperation may also lead to deeper harmonization in search strategies, examiner training, and substantive examination standards.
• Greater reliance on AI tools for search and examination: Artificial intelligence is beginning to transform the way patent offices conduct prior art searches, classify applications, and analyze inventive step. In the context of the PPH, AI can help patent examiners quickly validate the correspondence of claims, assess the relevance of prior work, and identify inconsistencies across jurisdictions. These tools have the potential to improve the speed and accuracy of accelerated examinations, while also helping to identify procedural anomalies that may impact PPH eligibility.

Conclusion

In summary, the Patent Prosecution Highway is a powerful mechanism that provides a strategic advantage to businesses and innovators by expediting prosecution of patents, improving consistency among jurisdictions, and lowering the overall burden of securing global patent rights.

If you are considering pursuing international patent rights or you have other patent matters with which you need assistance, contact our office for a free consultation.

© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.