18.2 Global/IP5 Patent Prosecution Highway

18.2 Global/IP5 Patent Prosecution Highway

What the PPH does

The Patent Prosecution Highway permits an applicant to request accelerated U.S. examination when a corresponding participating office has found at least one claim allowable or patentable. Under the Global/IP5 pilot framework in the registration-exam source materials, the earlier work may come from a national or regional Office of Earlier Examination (OEE) or from a qualifying PCT work product.

PPH is a work-sharing and docket-advancement program. The U.S. examiner remains responsible for U.S. law, performs an independent search and examination, and may reject every claim. An OEE allowance is evidence supporting the request, not binding res judicata.

Relationship between the applications

The U.S. application and corresponding application must share the same earliest date in the manner permitted by the pilot—for example, a common priority claim, a direct priority relationship, or a common PCT application. Merely claiming similar subject matter with unrelated filing histories is insufficient.

The OEE must have identified at least one claim as allowable or patentable. For a PCT route, a favorable written opinion or international preliminary report must expressly find at least one claim to have novelty, inventive step, and industrial applicability. Silence or a search report listing references without a positive claim finding does not satisfy this gate.

The applicant must file the PPH request before substantive examination of the U.S. application has begun. Once the U.S. examiner has started the merits examination, the applicant cannot retroactively obtain PPH status for that application merely by later receiving a foreign allowance.

Sufficient correspondence

Every claim pending in the U.S. application at the time of the request must sufficiently correspond to one or more claims indicated allowable by the OEE. A U.S. claim sufficiently corresponds when it has the same or similar scope, or is narrower because it adds a limitation supported by the U.S. disclosure and/or the corresponding disclosure.

A claim is not sufficiently corresponding merely because it concerns the same commercial product. A U.S. claim also may not introduce a new or different category of claim. If the allowable foreign claim is a method and the U.S. claim is an apparatus with no corresponding allowable apparatus claim, the category change defeats correspondence even if the two are technologically related.

The applicant explains the mapping in a claim-correspondence table. When a U.S. limitation is narrower, the table should identify its support instead of stating only “similar.”

Required papers

A complete request ordinarily contains:

1. the request for participation and request for special status under the pilot;
2. a table showing how every U.S. claim corresponds to an OEE allowable claim;
3. copies of relevant OEE office actions or PCT work products, unless the USPTO can obtain them through an accepted dossier system;
4. English translations when the papers are not in English, with the required accuracy statement where applicable; and
5. copies of non-U.S. cited documents and an IDS or equivalent citation compliance when required by U.S. practice.

The PPH request itself has no petition fee under the pilot, although ordinary application and other fees remain due. The applicant usually receives only one opportunity to correct defects in the request. Failure to perfect it within the notice period results in denial, without extending other prosecution deadlines.

Effect after acceptance

An accepted application is advanced out of turn for examination. PPH status carries through an RCE filed in the same application, but it does not automatically attach to a continuation or divisional. A separately filed continuing application needs its own timely request and must independently meet the pilot requirements.

Claims added after PPH acceptance must continue to sufficiently correspond. An amendment that introduces a broader or different-category claim can jeopardize special status or require explanation. The examiner applies the broadest reasonable interpretation and all U.S. patentability requirements.

Duty of disclosure remains

PPH participation does not replace an IDS. Persons subject to Rule 56 must disclose material information known to them, including material OEE search results and office actions as U.S. rules require. Supplying a paper with the PPH request can satisfy a document requirement without necessarily satisfying every timing, fee, certification, and citation requirement of Rules 1.97 and 1.98.

Eligibility matrix

The concise exam answer is: PPH changes order and speed, not substantive entitlement.