Cruising the Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is an agreement between a number of national patent offices which aims to reduce the time and expense of obtaining patent protection in each of those countries.

Until recently, the PPH system operated as follows.  Where an applicant filed an initial application at a first national patent office, and then subsequently filed corresponding applications at other national patent offices, they were able to apply to accelerate prosecution of their corresponding applications if and when a favourable decision was issued by the first national patent office.

Although useful, this scheme was, therefore, restricted to only come into operation when a favourable decision was issued by the patent office at which the first application was filed.

A pilot scheme is now in place which allows prosecution of corresponding applications to be accelerated regardless of which patent office issues the earliest favourable decision. 

This new scheme has been named MOTTAINAI, a Japanese word meaning “a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilised”.

Requests for accelerated prosecution, therefore, can now be made under the PPH MOTTAINAI program when a first favourable decision is issued by any of the Patent Offices in the agreement, even if this is not the patent office at which the first national application was filed.

The UK Intellectual Property Office (UK-IPO) has PPH agreements with both the US Patent and Trademark Office (USPTO) and the Japanese Patent Office (JPO). 

If, therefore, applicants have corresponding applications filed in two or more of these countries, and a favourable decision is issued quickly by one of these patent offices they should consider using the PPH agreement to accelerate prosecution of their other applications.

More information can be found on the UK-IPO website at http://www.ipo.gov.uk/types/patent/p-applying/p-after/p-pph/p-pph-pilot.htm.

Jacqueline Holmes