Efficiency v Flexibility – The Patent Prosecution Highway (PPH) Program’s Pros and Cons

The Patent Prosecution Highway (PPH) program is a collaborative initiative between the United States Patent and Trademark Office (USPTO) and several foreign patent offices, created to speed up the examination process. Through the PPH, a patent application initially filed with a participating patent office (Office of Earlier Examination, or OEE) can be expedited in another participating intellectual property office, provided it meets specific requirements. According to the USPTO, PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.  

The PPH has become popular due to its cost-saving advantages and prosecution efficiencies. According to the cumulative USPTO PPH data for all regions, as of September 30, 2024, a total of 97,397 applications with PPH petitions had been filed from the beginning of the program, and 87,961 of those PPH petition requests were granted. USPTO statistics show that allowance rates are about 10% higher for patents in the PPH program. 

However, given the constraints of the USPTO’s PPH program, discussed in more detail below, patent applicants should carefully consider whether the PPH program is the best option for accelerating examination of their U.S. applications granted elsewhere. This article outlines some of the pros and cons of submitting U.S. patent applications via the PPH program.  

What are benefits of using the PPH program? 

One benefit of the PPH program is cost. The increased likelihood of first Office action allowances, fewer final Office actions, and fewer Requests for Continued Examinations (RCEs) can translate statistically into significant savings for the applicant, especially for applicants filing a large volume of U.S. patent applications each year. Also, there is no added USPTO fee for filing a PPH request.  

A second benefit of using the PPH program is speed. A decision on the PPH petition is provided by the USPTO within two months of filing the application. According to USPTO statistics, the rate of first Office action allowances is notably higher for applications utilizing the PPH. This means that the first action received is often a notice of allowance, which can save several months of pendency. If the PPH status is granted, the first substantive Office action from the USPTO is received in about 2-5 months. This is a significantly shorter time frame than the typical 18–24-month time period before a first action on the merits. Additionally, the statistics indicate fewer final Office actions and RCEs for PPH applications, further reducing application’s prosecution time. 

A third benefit is more efficient prosecution and slightly improved rates of allowances. When a U.S. patent application has corresponding filings in multiple jurisdictions, the overlapping issues, volume of paperwork and correspondence can increase complexity. The PPH can often streamline these inefficiencies. Again, the success rates for achieving an allowance and an issued patent are slightly higher, i.e., about 10% higher for patents in the PPH program. 

What are disadvantages of using the PPH program? 

One disadvantage is the restrictions on the amendment process for applications in the PPH program. The PPH program only permits amendments that sufficiently correspond in scope to the allowable claims of an earlier-examined application.  

A USPTO notice published in the Official Gazette in 2014 provides some guidance for amending the claims in a PPH application at the USPTO. According to the notice, 

A claim in the U.S. application that is narrower in scope than the claims indicated as allowable/patentable in the OEE application will sufficiently correspond if presented as a claim dependent upon a claim that is of the same or similar scope as a claim indicated as allowable/patentable in the OEE application. In this regard, a claim that is narrower in scope occurs when an OEE claim is amended to be further limited by an additional feature that is supported by the written description of the U.S. application.  

Narrowing amendments may be refused by an examiner in certain situations, such as where newly cited prior art arises requiring claim amendments, which would result in claims diverging in scope from the claims allowed by the OEE. This issue may also arise when the applicant is narrowing an independent claim or incorporating dependent claims into independent ones. Some Examiners may impose guidelines on amendments that are not present in similar non-PPH applications. As a result, an applicant’s flexibility in amending the claims is significantly reduced. 

A second disadvantage is the requirement for certification that the amended claims correspond to allowed claims by the OEE or narrow the claim(s).  

Applicants must comply with the requirements of claim scope discussed above. The failure to provide a statement certifying that the amended or any newly added claims of an amendment sufficiently correspond to allowable claims of an OEE application may result in a notice of noncompliant amendment. If not remedied, this failure could result in abandonment of the U.S. patent application.  

A third disadvantage is that once a PPH request is granted, there is no opportunity to withdraw a U.S. patent application from the PPH program. 

This leads to a fourth disadvantage, which is the potential for additional cost, which may outweigh potential cost saving. If the desired amendments do not result in a narrower claim or do not sufficiently correspond to the allowed claims in the corresponding foreign application, a continuation application is the only option. 

Although the PPH program seems an attractive route because the success rates for achieving an allowance and an issued patent are slightly higher, this benefit may not merit applying for the PPH status in certain cases. Applicants need to consider whether flexibility is more important than efficiency in view of the above considerations.