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

Transcription

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

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 2

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 3

4 Countries in Global/IP5 PPH Pilot Program 4

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 5

6 PPH Requirements Under Global/IP5 PPH Pilot Program in the USPTO 1. 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) 2. The corresponding application has at least one claim indicated by the office of earlier examination (OEE) to be allowable 3. 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 4. Substantive examination of the U.S. application has not begun For more information, see 6

7 Basic Statistics for Non-PPH Applications in U.S. Examination Actions per Application Disposal 1 Overall Allowance Rate 1 First Action Allowance Rate 1 Percent of Applications with at least one RCE 1 Average Pendency to First Office Action 2 Average Pendency to Final Decision 2 Non-PPH Applications % 12.6% 25% 18 months 29 months 1 Based on statistics presented by the USPTO in Sept Based on U.S. statistics published by the Japanese Patent Office for the period of July 2013 to December

8 Comparison of Non-PPH and PPH Basic Statistics in U.S. Examination Actions per Application Disposal 1 Overall Allowance Rate 1 First Action Allowance Rate 1 Percent of Applications with at least one RCE 1 Average Pendency to First Office Action 2 Average Pendency to Final Decision 2 Non-PPH Applications % 12.6% 25% 18 months 29 months PPH Applications % 36.8% 12% 5.2 months 14.1 months 1 Based on statistics presented by the USPTO in Sept Based on U.S. statistics published by the Japanese Patent Office for the period of July 2013 to December

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 9

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 10

11 PPH Cost Savings Estimates in U.S. The average cost for a reply/amendment of minimal complexity was $2100 Examination Actions per Application Disposal Total Costs for Replies/Amendments Non-PPH Application 3 $6,300 PPH Application 2.2 $4,620 This equates to an average cost savings of $1680 from replies/amendments alone 11

12 PPH Cost Savings Estimates in U.S. The average cost for a reply/amendment of relative complexity was $3500 Examination Actions per Application Disposal Total Costs for Replies/Amendments Non-PPH Application 3 $10,500 PPH Application 2.2 $7,700 This equates to an average cost savings of $2800 from replies/amendments alone 12

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 13

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 14

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 15

16 Mark Abumeri Orange County San Diego San Francisco Silicon Valley Los Angeles Seattle Washington DC knobbe.com