Requisite PPH Documents

We recently received a question about the documents necessary for entering an application into the Patent Prosecution Highway (PPH) program at the USPTO.  As a reminder, the PPH program is available for US applications in which a non-US office (the Office of Earlier Examination or “OEE”) has determined claims to be patentable.

The necessary documents for the PPH program are:

– A work product from the OEE, if the OEE application was rejected at least once;

– An English-language translation of the work product, if the work product was not in English;

– An Information Disclosure Statement (IDS) listing references cited in the work product; and

– A PPH Petition

Further, most applications also will require an amendment to the claims, such as via a Preliminary Amendment.

The identity of the work product depends on the OEE application.  If the OEE application is a PCT application, then the latest work product is the Written Opinion of the International Search Agency (ISA), the Written Opinion of the International Preliminary Examining Authority (IPEA), or the International Preliminary Examination Report (IPER).  If the OEE application is not a PCT application (e.g., is a national office like the Japan Patent Office or a regional office like the European Patent Office), then the work product is the Office Action immediately before the “Decision to Grant a Patent.”

If the OEE application received a first action allowance, then an IDS is not required (but is strongly recommended).  Otherwise, an IDS actually is a requirement to entering the PPH program.

The PPH Petition includes a claims correspondence table.  This table explains how the claims in the US application correspond to the claims of the OEE application.

If the patentable claims of the OEE application differ in scope from the US claims, then the US claims must be amended to “sufficiently correspond” to the OEE claims.  Such an amendment is the minimum amendment to enter the PPH program.  As detailed elsewhere, we very strongly recommend a more detailed amendment.

As always, there is more detail to the PPH program than can fit into this summary.  Please contact us if there are questions or if more information would be beneficial.

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