Guide to the Patent Prosecution Highway (PPH) System

The Patent Prosecution Highway (PPH) is a cooperative program between two or more patent offices that allows an applicant to receive expedited examination in a country (subsequent patent office) based on a finding of patentability in another country (preceding patent office). This enables applicants to shorten examination periods and increase the predictability of examination outcomes in multiple countries. Furthermore, patent offices can streamline their examination work by sharing examination results and data from partner offices, allowing applicants to benefit from faster rights acquisition and reduced examination costs.

PPH Participating Patent Offices and Objectives

PPH Participating Patent Offices (Patent Organizations)

Purpose of the PPH System

• Applicant's Perspective: Supports applicants who have filed common patent applications in participating countries to obtain patent rights quickly and efficiently by receiving prioritized examination (or accelerated examination) in the partner country.
• Patent Office's Perspective: Strengthens examination cooperation among major patent offices, reducing their own examination burden and improving examination quality by referencing the examination results from other patent offices (Note: Final examination is conducted independently by each patent office).

PPH Application Requirements and Submitted Documents

Basic Requirements

1. The patent application must be based on a corresponding application filed in the partner country (or include a national phase entry application of a PCT application).
2. At least one claim in the partner country's patent application must have been determined as "patentable" by the examiner at the partner country's patent office.
3. All claims in the patent application for which PPH is requested must be identical to or narrower in scope than the claims determined as "patentable" by the partner country's patent office.

Submitted Documents

1. The claims (original text) and their translations, including claims determined as patentable by the partner country's patent office.
2. Examiner-related notices issued by the partner country's patent office and their translations.
3. Prior art documents cited in the examiner-related notices.
4. A table explaining the correspondence between the claims of the Korean patent application and the partner country's patent application.

Note: Detailed requirements regarding eligible applications, application form formats, types of submitted documents, conditions for omitting submission of documents (①, ②, ③), and examination procedures must be confirmed by consulting the PPH usage guidelines for each country.

Status of Official Fees for PPH Applications in Major Countries

While an official fee of KRW 200,000 is charged in Korea for the PPH program itself, most patent offices do not charge this fee, operating the program free of charge. Detailed country-specific information is as follows:

• United States (USPTO)
  • No PPH application fee. There is no separate fee for using the PPH program, and accelerated examination can be received free of charge.
  • (Reference) USPTO's other accelerated examination program, Track One, requires a fee of approximately $4,000 for large entities, but PPH allows for expedited examination without additional costs.
• Japan (JPO)
  • No PPH application fee. Since PPH is operated within the accelerated examination system, there are no additional payments required beyond the standard examination request fee.
  • Even when utilizing PPH, the same fee structure as for normal examination applies, so no additional official fees are incurred.
• Europe (EPO)
  • No PPH application fee. No separate official fees are charged, and examination is conducted similarly to accelerated processing (PACE program).
  • When applying for PPH, only the basic fees such as EPO's inherent filing, search, and examination request fees need to be paid.
• Other Major Countries
  • Most PPH participating countries, such as China (CNIPA) and the United Kingdom (UKIPO), do not charge a separate PPH application fee.
  • While some countries may have internal procedural requirements for PPH requests, generally, 'exemption from official fees' is common.

Comparison of PPH Application Procedures and Costs

The PPH application procedures at various patent offices generally follow similar principles, but there are differences in the specific documents and forms required. Commonly, the applicant must have claims in the **subsequent patent office (OLE)** that are similar (or identical) to the claims found patentable by the preceding patent office (OEE), and the PPH must be requested before substantive examination begins. Additionally, the results of the prior examination (search report, notice of reasons for rejection, notice of allowance, etc.) and a claim correspondence table must be submitted, with translations attached if necessary.

United States (USPTO)

• Application Procedure: Submit a PPH request form (Form SB) along with a simple correspondence table explaining that the claims of the US application match the allowed claims from the preceding country. The documentation is relatively straightforward.
• Cost: No official fees. Offers significant cost advantages compared to other accelerated examination systems like Track One.
• Examination Speed: After PPH approval, the first examination typically occurs within approximately 2-3 months, significantly shortening the overall examination period.

Japan (JPO)

• Application Procedure: PPH is operated as a form of accelerated examination (prioritized examination). By submitting a "Statement of Grounds for Accelerated Examination" along with a "PPH Application Form," the Japan Patent Office will conduct accelerated examination. A translation of the allowed claims from the preceding country and a copy of the examination results notice must also be submitted.
• Cost: No separate PPH application fee. No additional costs beyond the standard examination request fee.
• Examination Speed: Examination commences within approximately 2 months of the PPH request, with an average final decision rendered within 7 months, indicating a significantly expedited examination process.

Europe (EPO)

• Application Procedure: There is no official form; PPH applications are typically submitted via letter before examination begins. To meet PPH requirements, the notice of allowance from the preceding office and a claim correspondence table must be submitted, with translations in the official language (English, German, or French) attached if necessary.
• Cost: No additional official fees for the PPH application; only EPO filing, search, and examination request fees need to be paid.
• Examination Speed: Upon PPH application, prioritized examination equivalent to accelerated processing (PACE) is conducted. However, the final grant of the patent is determined based on independent criteria, requiring flexible responses for rights confirmation.

Additional Cost Factors to Consider for PPH Applications

While PPH itself is free, the following ancillary cost factors may arise:

1. Attorney/Agent Fees
   • Expertise is required for preparing PPH application documents (creating claim correspondence tables, collecting and organizing prior examination documents, reviewing translations, etc.). If an agent handles this, service fees may be charged.
2. Translation and Document Preparation Costs
   • Translation is essential when the languages used by the preceding and subsequent patent offices differ. For example, if applying for PPH in the US based on Korean examination results, an English translation is necessary. Translation costs may increase for complex technologies.
3. Claim Amendment Work
   • Amendments may be necessary to substantially align the claims of the subsequent application with the claims allowed in the preceding country. Preparing claim amendments can also incur attorney fees or require significant time if done in-house.
4. Other Costs such as Maintenance Annuities
   • If a patent is granted early through PPH, the payment schedule for subsequent costs, such as maintenance annuities, may be advanced. However, considering the market competitiveness gained from early rights acquisition, the benefits of early rights acquisition are generally considered greater in most cases.

Cost Reduction Strategies for Korean Companies Utilizing PPH for Overseas Patent Acquisition

Korean companies can significantly reduce overall costs by actively utilizing PPH when acquiring overseas patents.

1. Strategic Selection of the Office of Earlier Examination (OEE)
   • Obtaining a patent first in a country with fast examination and then applying for PPH in other countries based on that patent is more efficient than undergoing lengthy examinations in each country individually. For example, one could consider securing rights quickly in Korea (KIPO) and then expanding to the US and Europe via PPH, or obtaining a patent first in the US and then utilizing PPH in Japan and China.
2. Utilizing Post-Grant Prioritized Examination through PPH
   • While applying for prioritized examination (accelerated examination) individually in each country can pose cost or eligibility challenges, using PPH allows for accelerated examination effects in multiple countries simultaneously without additional official fees. For instance, a Korean company that first obtains a US patent can then apply for PPH in Japan and receive expedited examination there without needing to apply for prioritized examination separately in Japan.
3. Reduced Attorney Fees due to Fewer Rejection Notices
   • Applications filed through PPH tend to receive fewer rejection notices, leading to an overall reduction in intermediate response costs such as preparing opinions and amendments. Statistics show that rejections for PPH applications are less than half compared to ordinary applications.
4. Increased Cost-Effectiveness due to High Grant Rates
   • Since PPH examination is based on claims already deemed "patentable" in the preceding country, the grant rate tends to be higher. Early decisions on grant can reduce additional costs for re-filing, appeals, or amendments, maximizing cost-effectiveness.
5. Integration with International Procedures such as PCT-PPH
   • If a positive International Search Report (ISR) or International Preliminary Examination Report (IPER) is obtained during the international application (PCT) phase, PCT-PPH can be applied for at each national patent office based on these results. This allows for time and cost savings and expedited patent acquisition by sharing PCT results without redundant examination.

Conclusion and Recommendations

The Patent Prosecution Highway (PPH) is a powerful tool for Korean patent attorneys and corporate representatives to acquire overseas patents quickly and efficiently. Its significant advantages include that major countries like the United States, Japan, and Europe do not charge their own PPH fees, and the application procedures are not overly complex.

Through PPH, Korean companies can enhance their intellectual property competitiveness by securing patents more economically and swiftly in major global markets. To achieve this, it is crucial to accurately understand the procedures in each country and employ effective combinations (e.g., first secure a domestic patent → apply for overseas PPH, or prioritize US registration → expand to other countries). We recommend consulting thoroughly with your patent attorney to develop an optimal PPH utilization strategy.