A Little More PPH

We receive many questions about the Patent Prosecution Highway (PPH) program.  So, let’s revisit the topic.

Few, if any, Applicants file applications in the USPTO exclusively in the PPH program.  Therefore, Applicants typically have experience prosecuting applications outside the PPH program.

Further, most Applicants (and especially foreign Applicants) begin their experiences at the USPTO by amending independent claims to incorporate features from dependent claims.  Indeed, the MPEP offers an incentive for this behavior.  MPEP 706.07(a) (subsequent actions not being made final, because a new rejection of such an independent claim would not be necessitated by Applicant’s amendment).  However, Applicants eventually shun this practice, especially because foreign-origin dependent claims often are ineffective for addressing the Examiner’s application of the broadest reasonable interpretation (BRI) standard.

In the PPH program, the features used to amend independent claims first must be presented in dependent claims.  As long as a PPH application always includes one dependent claim believed to overcome the current rejection, then prosecuting the application under the PPH creates no additional cost or delay.

However, if the application ever does not include a dependent claim believed to overcome the current rejection, then a response basically is wasted to add such a dependent claim.  This wastefulness occurs each time Applicant believes no dependent claim overcomes the current rejection. 

Such a scenario frequently occurs when an Examiner shifts primary references in a PPH prosecution.  For example, assume an Office Action uses Reference A to reject Claim 1 and a combination of Reference A and Reference B to reject the dependent claims.  When responding to such an Office Action, the Applicant can consider the interpretation of both References A and B.  So, in responding to this Office Action, the Applicant can add a new dependent claim in view of potential interpretations of References A and B.  (Of course, this practice is fairly difficult.)

However, it is very difficult to add a new dependent claim to address an interpretation of an unknown reference.  So, if the next Office Action rejects Claim 1 over new Reference C, then the Applicant might need to waste a response to add dependent claims to address this new reference.

As a result, prosecuting PPH applications at the USPTO can be fairly expensive and slow.  Accordingly, Applicants should add specially-prepared dependent claims as early in prosecution as practicable.

If Modal PLLC can assist you in navigating the challenging PPH program before the USPTO, please contact us.

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