Work Sharing is Bringing the Patent World Closer Together

Patenting is no longer the domain of a few wealthy countries; today it is a global affair.  In 2012, the latest year for which statistics were available, applicants filed more than 2,567,000 patent applications, and patent offices worldwide granted almost 1,170,000 patents.  All told, about 8.6 million patents were in force in 2011. Not only has the patent world expanded, it has also taken a definite turn toward Asia.  Among the five countries in which US applicants most frequently file patent applications, China, Japan and Korea come in second, third, and fifth place, respectively (with Europe and Canada coming in first and fourth).  And to the surprise of many, the State Intellectual Property Office of China has surpassed the US Patent and Trademark Office as the largest patent office in the world, while the patent offices of Japan and Korea fill the third and fourth slots. These developments have helped to open markets and have created tremendous commercial advantages for the creators of technology, but they have also made patenting decisions and patent prosecution that much more complex.

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Fortunately, as patent activity has intensified across the globe, so have the efforts of national and regional patent offices and the World Intellectual Property Organization (the UN specialized agency dedicated to improving respect for intellectual property) to make the patent process more rational and efficient.  Particularly important has been the work of the US, European, Japanese, Korean, and Chinese offices, which collaborate together as the “IP 5” and have recently promoted the notion of patent office work sharing—of communicating information about patent applications pending in more than one office and attempting to avoid unnecessary duplication in the search and examination process.  Work sharing is a truly welcome development, especially since it benefits both patent applicants and patent offices.  It makes patenting faster and more predictable, it generally lowers the cost of prosecution, and it helps to decrease the huge patent application backlogs that have plagued large patent offices everywhere.  As work sharing initiatives proliferate and assume an increasingly prominent place in the patenting arena, patent applicants seeking protection both at home and abroad stand to be the major beneficiaries.

 

The most important work sharing effort to date is the Patent Prosecution Highway (PPH), an initiative first proposed by the Japan Patent Office.  PPH has its legal basis in a web of bilateral agreements that link the different patent offices (the USPTO has agreements in place with over 30 offices), and those agreements have achieved greater success than any single office could have imagined.  PPH is designed for patent applicants who want patent protection for their invention in more than one country, and who receive a favorable opinion on patentability from one of the offices that has examined their application.  Under PPH, applicants can take advantage of that opinion to expedite examination in other offices in which they have filed a related application.  When PPH was first rolled out, a favorable opinion (which, in the context of PPH, means a determination that the application contains at least one allowable claim) had to come from the patent office in which the application was first filed (known as the Office of First Filing, or OFF).  PPH programs have since become less dependent on the OFF, however.  In an initiative known as PCT-PPH, an applicant who files a PCT application can use the favorable results of an international search report and written opinion to receive PPH treatment.  And in the most recent version of PPH, called PPH Mottainai, the OFF has been replaced by any patent office that has carried out a favorable, earlier examination of the application.  

Taking advantage of PPH programs can result in faster examination and increase the likelihood of patent grant.  It is a work sharing success story well worth considering.    

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