The Patent Prosecution Highway: Is Life in the Fast Lane Worth the Cost?

Editorial · Volume 3, Issue 2 (2012)

The Patent Prosecution Highway is one of the more ambitious bureaucratic experiments of the modern patent system. Launched as a pilot between the United States Patent and Trademark Office and the Japan Patent Office in 2006, it has since grown into a network of bilateral and multilateral arrangements covering most of the world’s major patent offices. The premise is straightforward: when one participating office has examined an application and indicated that at least one claim is allowable, the applicant may use that result to request expedited examination of the corresponding application in any other participating office. The promise is faster grants, reduced duplication, and a measure of de facto harmonization among offices that remain formally independent. The question this Article raises is whether the promise is worth the cost.

How the Program Works

An applicant who has received a notice of allowance, an examination report indicating allowable subject matter, or a corresponding favorable office action in the office of first filing may petition the office of second filing for participation in the PPH. The second office accepts the request when the claims under examination sufficiently correspond to the claims allowed in the first office. The application then jumps to the front of the examiner’s docket. In most participating offices, first action on the merits follows within two to three months, and final disposition typically follows within twelve. For an applicant accustomed to multi-year prosecution timelines in jurisdictions like Brazil or India, the difference is striking.

The Cost of Acceleration

The strategic question is not whether the PPH delivers a faster grant. It does. The question is whether the faster grant is worth what the applicant gives up to obtain it. Three costs deserve attention.

The first cost is claim flexibility. To use the PPH the applicant must commit to claims that correspond closely to the allowed claims in the office of first filing. Late-stage amendments to broaden, narrow, or restructure the claim set are difficult to reconcile with PPH participation. Applicants who anticipate a need for ongoing claim revision — for example, because the relevant technology is evolving rapidly or because litigation strategy is unsettled — may find the constraint expensive.

The second cost is the loss of strategic uncertainty. A long examination pendency is not always a defect. It can give an applicant time to observe how a market develops, how competitors position themselves, and how related patents fare in litigation. An applicant who accelerates grant under the PPH forfeits some of that observation period. For incremental innovations in fast-moving fields, the optionality of a long pending application can be more valuable than an early certificate.

The third cost is examination quality. The PPH does not formally lower the substantive bar. Each office continues to apply its own patentability requirements. But examiners working under expedited timelines and looking at applications that have already been allowed elsewhere may, as a behavioral matter, give those applications a less searching review. Empirical work on PPH grant rates suggests that PPH applications are allowed at materially higher rates than comparable non-PPH applications in the same offices, even after controlling for technology field and applicant characteristics.

Who Should Use It

The PPH is most valuable to applicants who have already secured strong, well-supported claims in a sophisticated office of first filing and who need a corresponding grant in a second jurisdiction for a specific business reason — impending litigation, an upcoming product launch, a financing round that values the patent estate, or a licensing negotiation in which an issued patent carries more weight than a pending application. For these applicants the trade-offs we have described are easy to accept. The applicant has already paid the price of building a strong claim set; the PPH simply lets that work do double duty.

The PPH is less obviously useful for applicants who file broadly as a defensive measure, who expect substantial claim amendments, or who do not need an early grant for any concrete strategic purpose. For these applicants the cost of locked-in claims and forfeited optionality may exceed the value of an accelerated grant.

Implications for Harmonization

The PPH was not designed as a harmonization instrument and its drafters have been careful to deny that it is one. But the cumulative effect of the program is harder to deny. When applicants systematically prosecute first in offices known for examination quality and then leverage those results into other jurisdictions, the offices of first filing acquire an outsized influence on global patent grant patterns. The work of scholars studying patent assertion entities has shown how secondary markets in patents can transmit doctrinal effects from one jurisdiction to another. The PPH operates in the primary market, at the moment of grant, and its harmonizing effect may run deeper for that reason. Whether such harmonization is desirable is a question on which reasonable observers disagree.

A Cautious Verdict

The Patent Prosecution Highway is a useful tool for a particular kind of applicant pursuing a particular kind of patent strategy. It is not a substitute for thinking about whether a faster grant actually serves the applicant’s interests. The promise of the fast lane is real. So is the cost of being committed to a destination chosen at the moment of entry, when the road ahead is still poorly mapped.

Frequently Asked Questions

What is the Patent Prosecution Highway?

The Patent Prosecution Highway (PPH) is a network of bilateral and multilateral agreements between patent offices that lets an applicant who has received an allowance in one office request expedited examination in another participating office for the corresponding application. It is intended to reduce duplication of examination work across jurisdictions.

Does the PPH change patentability standards?

No. Each office continues to apply its own substantive patentability requirements. The PPH affects only the order and pace of examination, not the grant criteria. An application that would fail novelty in the second office still fails after PPH entry.

When is the PPH worth using?

The PPH is most valuable when an applicant has received clean allowed claims in the first office, when the same claim set will be filed in the second office, and when the applicant has a business reason to accelerate grant in the second jurisdiction. It is less useful when claims will be substantially amended or when the second office is known to apply markedly different standards.