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Advantages and Disadvantages of PPH

Advantages and Disadvantages of PPH. 9 November 2014. Asian Patent Attorneys Association 63 rd Council Meeting Penang, Malaysia. Mark Abumeri. Firm Profile. Five Decades. One Focus: IP Eight offices in the U.S. District of Columbia State of California State of Washington

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Advantages and Disadvantages of PPH

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  1. Advantages and Disadvantages of PPH 9 November 2014 Asian Patent Attorneys Association 63rd Council Meeting Penang, Malaysia Mark Abumeri

  2. Firm Profile • Five Decades. One Focus: IP • Eight offices in the U.S. • District of Columbia • State of California • State of Washington • Over 275 lawyers and scientists • Practice across a vast array of industries • Over 95% of attorneys hold technical degrees

  3. National Reputation Rankings • Ranked among 2014 “Best Law Firms” by U.S. News & Best Lawyers • Named to the 2013 “Intellectual Property Hot List” by the National Law Journal • Recognized Nationally and Regionally in the “2014 IP Handbook” by Managing Intellectual Property (MIP) • Named IP Law Firm of the Year by Lawyer Monthly • Ranked Top IP Firm in 2014 “Best Law Firms Practice Area” Rankings by Vault

  4. Countries in Global/IP5 PPH Pilot Program

  5. Patent Prosecution Highway (PPH) Background • When claims are allowed in a PPH Office, a related application with corresponding claims in another PPH office is fast-tracked for examination upon an applicant’s request • Initially two types: Paris Route and PCT • Unified in Global/IP5 PPH pilot program in USPTO

  6. PPH Requirements Under Global/IP5 PPH Pilot Program in the USPTO • The U.S. application has a corresponding allowed application in another PPH office that has the same earliest filing date (e.g., priority date or filing date) • The corresponding application has at least one claim indicated by the office of earlier examination (OEE) to be allowable • All the claims of the U.S. application must, or be amended to, sufficiently correspond to one or more of the allowed claims in the corresponding application • Substantive examination of the U.S. application has not begun For more information, see http://www.uspto.gov/patents/law/notices/global-ip5.pdf

  7. Basic Statistics for Non-PPH Applications in U.S. 1Based on statistics presented by the USPTO in Sept. 2014. 2Based on U.S. statistics published by the Japanese Patent Office for the period of July 2013 to December 2013.

  8. Comparison of Non-PPH and PPH Basic Statistics in U.S. 1Based on statistics presented by the USPTO in Sept. 2014. 2Based on U.S. statistics published by the Japanese Patent Office for the period of July 2013 to December 2013.

  9. Observations from Comparison of Non-PPH and PPH Statistics • In the U.S., PPH applications had on average: • Fewer Office actions • Higher allowance rates • Higher first action allowance rates • Fewer percentages of applications with at least one RCE • Shorter average pendency to first Office action and final decision

  10. PPH Can Lead to Cost Savings in U.S. • According to an AIPLA report,1 the average cost for preparing a reply/amendment is approximately as follows: • Application of minimal complexity: $2100 • Application of relative complexity: $3500 • PPH applications have on average fewer replies/amendments than non-PPH applications. As a result, an applicant saves the costs of preparing more replies/amendments 1.For more information, see AIPLA Report of the Economic Survey, 2011 at www.buigarcia.com/docs/AIPLA-PPH(HHB).pdf

  11. PPH Cost Savings Estimates in U.S. • The average cost for a reply/amendment of minimal complexity was $2100 • This equates to an average cost savings of $1680 from replies/amendments alone

  12. PPH Cost Savings Estimates in U.S. • The average cost for a reply/amendment of relative complexity was $3500 • This equates to an average cost savings of $2800 from replies/amendments alone

  13. Observations for PPH Cost Savings Estimates in U.S. • Using PPH can save thousands of dollars per application just on the cost of replies/amendments alone • There is no official fee to use PPH • There are other potential savings, for example: • Time savings due to shorter prosecution • May lead to fewer complications for formulating IP business strategies, especially in fast changing fields of technology • Less uncertainty due to higher allowance rates

  14. Quality of PPH Examinations in the U.S. • U.S. Examiners re-use the search and examination results completed by other patent offices along with their own substantive search and review • Potential benefits • Potentially higher quality examination than can be delivered by any single office acting alone • Stronger patent rights because the Examiner has access to more information and analysis • Better informed Examiners

  15. Disadvantages? • Additional upfront paper work • Higher stakes in earlier prosecution • Differences in laws between countries may make it difficult to seek the same scope of claims in strict jurisdictions • The claim correspondence requirement may require upfront planning in order to take full advantage of PPH

  16. Mark Abumeri Mark.Abumeri@knobbe.com 858-707-4000

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