Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Patent Prosecution Highway: Fast Tracking Your Application
Getting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you need it fast. Luckily, there are some options for fast tracking your application.
In today’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion along with our all star patent panel, exploring one of these options – the Patent Prosecution Highway (PPH) and how it can significantly speed up prosecution between international jurisdictions with similar policies.
Ashley is joined today by an exceptional group of IP experts including:
* Steve Stupp, Partner at Stupp Associates, LLC.
* David Jackrel, President of Jackrel Consulting
* Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting
* Dominic Filice, Patent Expert at Parola Analytics, Inc.
As was the case with the last episode, our discussion panel really jumps right into the thick of the material and in retrospect we thought it might be helpful for the not yet IP experts out there to set the table a bit. I sat down again with Ashley for a brief conversation to help set the stage for what the patent prosecution highway is, how it fits into the patenting process, and when it might make sense for you. We discussed:
* Real numbers on how long it takes to get a patent under normal circumstances without an expedited path.
* Options for skipping in line and fast tracking your application when you need to move more quickly (U.S. and International options).
* Benefits, risks, costs, and relative time implications for PPH, Track One Prioritized Examination, and Accelerated Examination.
***
** Resources **
* Show Notes: https://www.aurorapatents.com/blog/new-podcast-patent-prosecution-highway
* Slides: https://www.slideshare.net/JoshSloat1/patent-prosecution-highway-fast-tracking-your-application
** Follow Aurora Consulting **
* Home: https://www.aurorapatents.com/
* Twitter: https://twitter.com/AuroraPatents
* LinkedIn: https://www.linkedin.com/company/aurora-cg/
* Facebook: https://www.facebook.com/aurorapatents/
* Instagram: https://www.instagram.com/aurorapatents/
And as always, thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.
WEBVTT
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Good day. And welcome to the Patently Strategic Podcast, where we
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discuss all things in the intersection of business, technology and patents.
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This podcast is a monthly discussion amongst experts in the field of patenting.
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It is for inventors, founders and IP professionals alike,
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established or aspiring. In this episode, we talked about speeding
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up the patenting process with a little lead footing on the patent prosecution Highway.
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Getting a patent is no quick process. In the time
00:31.070 --> 00:34.020
between filing and issuance, your application will go through several stages,
00:34.170 --> 00:37.830
often from multiple patent offices, and with months or years between
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stages, the total process can take two to 5 years and sometimes longer.
00:41.670 --> 00:44.820
But who has time for that? Sometimes you need a patent and you need
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it fast. Luckily, there are some options for fast tracking your application. In today's
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episode, Ashley Slope, President and director of patent strategy here at Aurora,
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leads a discussion along with our Allstar patent panel exploring one of these
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options, the patent prosecution Highway, and how it can significantly speed up
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prosecution between jurisdictions with similar policies. Ashley is joined today by
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an exceptional group of IP experts, including David Jarel,
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President of jackry Consulting, Daniel Right, partnership manager and patent strategist
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here at Aurora, Steve Stop, partner at Step Associates LLC.
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And Dominic File, patent expert at Parola Analytics Inc. As was
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the case with our last episode, our discussion panel really jumps right into the thick
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of the material. In retrospect, we thought it might be helpful for the not yet
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IP experts out there to set the table a bit. I sat down with Ashley
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for brief conversation to help set the stage for what the patent prosecution
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Highway is, how it fits into the patenting process and when it might make
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sense for you. So, Ashley, securing a patent can take
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a while. Can you help by putting some real numbers to that
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in terms of overall timeline under normal circumstances?
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Yeah, absolutely. When you go directly into
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the Us. So if you file an application with Us Patent Office from that
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time point, you're looking easily from two to 5 years
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to actually get your issue patent in hand, because the typical penance
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before an Xander even picks it up, I'd say the shortest I've
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seen it is maybe a year. But typically you're looking at 16 to 18 months
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before an Examiner even picks it up. And then once they pick it up,
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then you have to go through the whole prosecution lifestyle that bordering
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that they've rejected. You make amendments from
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an international perspective. You're adding time because you now
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have that international application pendency period,
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which is a total of 30 months. And then for
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most countries in the world, you also have a time period before you have to
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request examination. So with Europe, you request it right up
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front, just like the U S in China you requested six
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months later, and then many other countries of the world. It's three
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years later. Now that's not to say that you can't request it earlier,
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but you have all this extra time period based in there.
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If you were to want to delay that long,
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and then once prosecution kicks in, and it's probably about
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another year or so. So you're really looking at,
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from an international perspective, something on the order of
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probably 4-5-6 years, potentially. Also. So it's
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a long process, but I think from a smaller
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company perspective, it's good and that it delays some of
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the heavier costs until later in their company cycle
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or when they have funding now to see again that they can't move it up.
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But it does kind of at things to allow funding to
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roll in for those bigger financial lips.
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Nice silver lining, for sure. So that
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sounds like forever in start up years. Totally understand
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that examiners are flooded with very deep cues. But what if I need to move
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more quickly than that? Are there options for, you know, so to speak,
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skipping in line? Yeah. So as he alluded to from an international
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perspective, you can request exam early, right. You don't need to
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wait six months, 3 years, whatever it is,
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depending on which country you're in, you don't need to wait that full time period.
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Right. As soon as you enter those countries, you could
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request examination, get that moving. And then in some countries
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as well, I believe Europe as an example, you can even kind of it's
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no cost you that you can kind of tap the patent office,
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the European Patent Office, and say, Hey, we'd be okay if you sent us something
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sooner rather than later. And that can sometimes move things a
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little bit quicker. So that's from an international perspective, I'm sure there
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might be like, I think Brazil has if you're in certain types
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of cancer researcher, green energy areas,
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then you might be able to also move things quicker.
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And so definitely talk to each foreign associate in whatever country you're
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in and see what options are available. I do think they're somewhat limited,
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but they are available. You just have to determine what's right
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for you in each of those countries. From a Us perspective,
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we have a lot of options. We have petitions to make
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special based on age. I believe if you're over 65 years of age,
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you can move ahead in line faster. If you're
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also in certain art units, your technology is related
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to certain technology areas, you can have a petition
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to make special. And these things are usually free because they're
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trying to promote certain arts quicker. But then there are
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other at costs option. So for example,
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there is accelerated examination, which you basically
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pay, you know, a practitioner to do the job
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of the patent office. They would do a search. They would do claim charting.
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They wouldn't basically make the argument upfront about how
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your claims are patentable over all the art that you found. And so this
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is a little bit risky in the sense that you are admitting very clearly
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what the prior art is, what the prior art teaches, because you did do
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those claim charts and what they don't teach. So you're really admitting a lot of
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things usually try to avoid when the patent Office does their job and
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you do yours. And that's expensive from the perspective of you
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have to pay an Examiner to do all that work, or sorry, you have to
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pay a practitioner to do all that work.
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And then there is the track one expedited
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examination. You pay the patent office an additional fee,
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for example, I believe right now it's 2 100 dollars for a small
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entity which most, you know, small company starts will fall
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into that bucket, and they will guarantee you
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a final disposition in one year, a final disposition being
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something like a final rejection, a notice of allowance,
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or some other action that closes a first round of prosecution.
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And so that's, you know, if if you go into that process with
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a good strategy, layer your claims, well,
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make sure your claims really reflect the state of
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the org in terms of being appropriate, breath and narrowness,
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then that can be a really great option, and you usually can get it done
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in that first year. And so that one's kind of
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intermediate cost in the sense that you're paying the patent office extra. But you're
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not really paying a practitioner in theory, that much more,
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because they should kind of be doing that anyway. It's a little
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bit more careful, I guess. And then
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there's the Patent prosecution Highway, which we talk about later
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in this podcast. The Patent prosecution Highway is you've
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received a notice of allowance in another country that
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participates in the Greater Patent
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Cooperation Treaty. And because you received an allowance in another
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country, you can then suggest that those same amendments
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be used in the instant country to get
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your case allowed. Now, this obviously assumes that
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each country has the same standards of
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disclosure, clarity, patentability utility,
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and whatnot. And as we all know, that's not the case.
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Some countries are very austere in terms of disclosure
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requirements. Europe and China, for example, in Japan, can be really particular
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around disclosure and clarity. The Us tend to be
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a little bit more flexible, and so the prosecution
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Highway is for all those countries, but it definitely makes sense
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to do it in some settings. And maybe it doesn't make
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sense to do it. Like if you have the Us search for your
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Patent Cooperation Treaty application, they're your international searching
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authority. And Let's say they find claims that are allowed.
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It might not make sense to do PPH in Europe just because
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the Us and Europe has very different measures of clarity
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and disclosure. Whereas if the Us is your international
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searching authority, and then you take it into the Us and you have a
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lot of claims, and that really makes sense because the same country that did
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the search is the same country that found them allowed, and it's the same country
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that is going to take them through prosecution. So Similarly,
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if you use the European Patent Office as your international
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searching authority and they find claims allowed, then it would make sense probably
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more to do at prosecution Highway in Europe,
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because, again, that same authority that found them allowed is the same authority
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that's going to be taking them to prosecution. So there's just not
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all things are bidirectional. And so you definitely want to assess which
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country is issuing the allowance and which country are you
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going to use that allowance, hopefully, to your benefit? And does it make
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sense? Will it actually save you anything to try to use the patent prosecution
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Highway? And sometimes you'll find that it does. It just because the
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rules in each of those patent offices are just so different in your associate
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in whatever country you're looking at can also help weigh
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that benefit to determine if it is an appropriate use case for you
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or not. Like I said, from a Us perspective, if you're doing a Us
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Isa International Searching Authority and then going into the
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Us, it definitely makes sense. And it's probably one of the most cost effective ways
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to make prosecution go faster in the U S Okay,
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so this is all sound like really great options, highly situationally
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dependent. So if we could kind of just take a second to compare
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it sounds like with accelerated examination,
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it takes and put a lot of extra ever and potentially expense in
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working with your practitioner with Track one,
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you're kind of sending a lot of extra fees to the
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Patent Office to do their work for you more quickly in
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terms of the PPH, what's the timeline versus
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the others, and where does it shift the effort?
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Yeah, but I think based on
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the stats that the Patent Office provides, like I said, you attract one
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guarantees to found this position in one year, and I think they've been hitting that
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more quite well. Accelerated examination can be a little faster.
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I think some of their lowest stats say that you can get it in,
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like six years or something like that, again, because you're kind of
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handing him a full debate package, right. That can, on average,
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be a little faster than Track one, but also can
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kind of extend for one and a half years as well, depending for
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PPH. Again, they just stand because they don't guarantee anything.
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But the stats say I think that it's somewhere in the range of, like 1,
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1 and a half years. So still quite quite a bit faster than that to
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two to 5 years that I mentioned. And then from a workload perspective,
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if if claims one through 10 were found
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to be allowed at that international stage by the International searching authority and
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you're literally taking those exact same one through 10 claims into
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the Us, then the extra form that you fill out for the
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patent prosecution Highway is really simple, right? You're basically saying, I'm presenting
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you claims one through 10, the same one through 10 were allowed in the
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international patent application. If you're reconfiguring
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things and moving stuff around or changing them a little bit, then that
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form becomes a little bit more complex, because now you have to really show what
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the original claims were. And then now what you're
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presenting during National stage and how they correlate to one
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another. But it was really just one extra form. And so depending on how
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complex you're making it, it can be really easy for the practitioner,
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like 5, 10 minutes, probably to fill up the form. Or it can be a
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little bit more complex, because like I said, they have to do that tracking
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to show the somewhat one for 1 that there is
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and show what changes were made and things like that.
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But still, I think the cost
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relative nature in terms of you're going to stack typical prosecution
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is going to cost is going to cost a prosecution. Highways going to cost a
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little bit more if you have an extra form. And then I would say that
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track one is probably kind of after that because
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you do have that additional fee. And then I would say probably accelerate examinations
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would be the most expensive just because you have to do all that
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searching, all the claim charting. But who knows, that might end up being
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kind of on par with the track one. But like I said, I think the
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bigger risk is that if you're doing accelerate examination,
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you are admitting on the record that
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these references are prior art. These are exactly what they teach.
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And Here's how they relate to my claims. And usually during typical prosecution,
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you try to limit that exposure as much as possible. You know, every time you
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make an amendment, even if you think the art is spot on as
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a practitioner, I'm not going to say, Yeah, your art is spot on.
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Examiner, and Here's why. And then I'm going to make amendment accordingly. You're going to
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say, well, I don't necessarily agree with your assessment
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Examiner, but to expedite prosecution, I'm going to
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make these amendments. You never fully admit that what
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they found was good. I mean, you just make amendments to get around in argument.
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Now you're making a mammoth to get around the art.
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So it's kind of an admission in and of itself. But still, you're never formally
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saying, Yeah, your spoon Examiner. And so I think that's a little
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bit of the risk of that accelerate. And that's why I think we rarely see
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it. Honestly, we see a lot of track one. You see
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some PPA, and the typical prosecution can be really favorable
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for those companies that are not looking for something fast or looking for swimming
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to be pending into delay costs as much as possible.
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So then in your practice, and probably more broadly, most folks are probably
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taking either the PPA or Track one Lane they
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need if they need an accelerated expedited approach. Yeah,
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absolutely. It makes the most sense from a strategy
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perspective, record perspective, cost perspective.
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We've had a lot of good success, especially if you
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go into it with Track one app with the
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mindset towards the end goal, which is an issue patent in whatever
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time frame and then really sacking your claims in and having
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them at a really good scope. That's going to fall well with the
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Examiner and then being Proactive with the Examiner, having interviews and things
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like that, you can really get the job done in the time that you're supposed
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to get it done. That's interesting.
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From, like, working backwards perspective. Do you find that it has a nice
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side effect of maybe focusing the
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patent even more quickly, just kind of
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as a forcing function? Do you find that you get,
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I don't know, a better, worse or just
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slightly more focused and result?
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Yeah. Potentially.
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Yeah. It depends on the technology. Right. Because I
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think the some technologies, it's very clear upfront where
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the niche lies, where the enable piece
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lies. You may try to push the bounds more if you're not paying for
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that expedited route just to kind of see what happens.
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Right. Whereas if you're paying that extra amount, you don't really want
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to waste your time see what happens. You kind of want to get
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it in there nice and tight. And so I think there's definitely
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some benefit. I think the focusing the claims a little bit more upfront,
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especially if the goal is to get an issue patent fast and then
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to maybe focus on other broadening amendments and future applications. And I think
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it's a really good choice. Like I said, I think if you
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strategize well up front, think things through up front are
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Proactive with the Examiner. There's no reason why you shouldn't be
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able to get the job done in that one year time frame, at least
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for the Track one.
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Fantastic. Very helpful and also very encouraging.
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Thanks, Ashley. Absolutely.
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Production Side note, Before we dive in with the panel, apparently everyone
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is doing at home construction during the Pandemic, and podcast host
16:28.350 --> 16:31.240
are no exception. There's some hammering at times in the background that we were unable
16:31.250 --> 16:34.000
to clear with post production noise gating despite our best efforts.
16:34.100 --> 16:37.280
Audio quality, apologies in advance. All right, take it
16:37.290 --> 16:40.500
away, Ashley. In the home gym construction crew if I just
16:40.510 --> 16:43.200
decided to do this just because it seemed like there was a lot of interest
16:43.210 --> 16:46.440
in this last time. So I had some interest in too, because I've
16:46.450 --> 16:50.320
encountered it a little bit before, but I've had some interesting experiences
16:50.330 --> 16:54.110
with it. So it's all you probably
16:54.120 --> 16:57.620
know. There's the global PPA to the Pan Prosecution Highway and the IP
16:57.630 --> 17:01.370
five and prevents multiple countries from duplicating the same work.
17:03.110 --> 17:06.770
So the CPO nicely belongs to both of these programs,
17:06.780 --> 17:10.340
but not all countries belong to both. And the whole idea is that
17:10.350 --> 17:14.150
you can use the work product from a participating office as grounds
17:14.160 --> 17:16.610
for prosecution and another participating office.
17:17.510 --> 17:21.260
For most of them, there's a single form. But as
17:21.270 --> 17:26.540
you'll see in a later slide, the has also different relationships
17:26.550 --> 17:30.500
or treaties or agreements with other countries. And for those specific countries, there's specific
17:30.510 --> 17:34.690
forms for each of those countries. I would say that they're pretty infrequent countries
17:34.700 --> 17:38.560
that you would find yourself in, like Nicaragua. I've never personally
17:38.570 --> 17:42.100
filed a Nicaragua. So and the beauty of it is
17:42.110 --> 17:45.940
permits the accelerated processing for free from a patent
17:46.440 --> 17:50.560
office perspective, but not necessarily from a work
17:50.620 --> 17:54.340
product perspective. So these are both
17:54.350 --> 17:57.730
started. One started in 2,010 when it was 2,016,
17:57.740 --> 18:01.520
and then they've been renewed from time and time again
18:01.530 --> 18:04.910
thereafter. For the Pct,
18:05.000 --> 18:08.690
PPH or the global PPH, you can do fast
18:08.700 --> 18:12.800
tracking if the report is from any of those patent offices,
18:12.980 --> 18:14.810
the Us, Europe, Japan.
18:16.150 --> 18:20.060
And then I think IPA is Korea.
18:20.070 --> 18:25.220
Is that I think Pea is isn't
18:25.230 --> 18:28.440
that the, like,
18:28.450 --> 18:33.710
East Asian kind of conglomerate? That is it's
18:33.720 --> 18:37.040
actually international preliminary examining authority. So I think that's, like,
18:37.050 --> 18:40.670
I I preempted myself, and I look at things,
18:40.680 --> 18:44.030
you know, then there are some weird weird to me,
18:44.040 --> 18:46.930
the right term. There are other, like,
18:47.800 --> 18:51.010
regional offices beyond EPO. There's one for
18:51.020 --> 18:53.410
Africa. I believe there's one for repo,
18:54.310 --> 18:58.480
isn't there one for parts of Eastern Europe and Central
18:58.980 --> 19:01.090
Asia? I think there's one there as well.
19:01.320 --> 19:04.840
Yeah, I'm not familiar with those, but I think from the
19:04.850 --> 19:07.960
PPA perspective, they only do it from these five. But,
19:07.970 --> 19:11.230
Yeah, there's a lot of the little like Africa is or one of the other
19:11.240 --> 19:14.770
ones I'm the most familiar with. Africa has an aggregate of several
19:14.780 --> 19:17.110
countries that kind of go examination together.
19:18.520 --> 19:21.940
And then IP five is EPO, Japan, Korea,
19:22.440 --> 19:26.080
China, and Us. And so, like I said, Us participate in both of those.
19:26.090 --> 19:29.350
It really opens up the possibility of which jurisdiction
19:29.360 --> 19:32.770
that you could rely on. So Here's all
19:32.780 --> 19:36.520
the PPH countries, most of the key countries that you would
19:36.530 --> 19:40.070
find clients to be interested in, depending on their technology,
19:40.080 --> 19:44.320
of course. And then here is the additional
19:44.330 --> 19:47.590
PPA agreement that the Us has, and these each have
19:47.600 --> 19:51.460
a specific form. So if you have a client that's specifically interested in Taiwan,
19:51.760 --> 19:55.300
you'd have to find that specific. So I guess Taiwan
19:55.310 --> 19:59.200
and Brazil aren't as weird in terms of at least unusual from
19:59.210 --> 20:02.530
a filing perspective, but some of the other ones are a little bit less frequent.
20:02.540 --> 20:05.740
I think we've only done Mexico a handful of times, for example. And most of
20:05.750 --> 20:09.500
these other countries we haven't done too frequently. I ask you a quick
20:09.510 --> 20:12.980
question about the previous when you said that it
20:12.990 --> 20:16.970
had to come from is it had to come from certain search authorities.
20:17.330 --> 20:21.260
Does that mean if you file a Pct and Select any international
20:21.270 --> 20:25.570
search authority, then that's acceptable.
20:25.580 --> 20:26.920
Then that can be used as a PP.
20:28.280 --> 20:32.550
That is, I would assume
20:32.560 --> 20:35.820
so. Yeah. Because those are all validated offices. I assume
20:35.830 --> 20:39.770
if they're designated as an international searching authority that you could,
20:39.780 --> 20:43.260
then I think the Pct want is basically if you
20:43.270 --> 20:47.200
received a written opinion and search report obviously
20:47.210 --> 20:50.710
designated some kind of searching authority, so you could take the Pct written
20:50.720 --> 20:54.550
opinion. Right. And use that as the basis.
20:54.780 --> 20:58.230
So what you mean? I'm not
20:58.730 --> 21:02.280
sure, is the fast tracking is positive report from any Pct
21:02.290 --> 21:05.790
is, and then also from National stages in Europe,
21:05.820 --> 21:09.550
Japan and in the Us, those can also be used.
21:09.560 --> 21:13.630
Okay. Thank you. And I think actually even is
21:13.640 --> 21:19.120
Tea is the international preliminary examining authority. Isn't that when if
21:19.180 --> 21:22.900
you were to get additional searching from the PC stage,
21:23.110 --> 21:26.500
like if you were to have multiple invention
21:26.510 --> 21:30.250
searched and pay the extra fee and maybe even a chapter to demand would
21:30.260 --> 21:34.310
go through the IPA. I'll share
21:34.320 --> 21:35.270
that with everybody later.
21:38.560 --> 21:41.410
Perfect. Let me see.
21:41.820 --> 21:45.360
Okay. So from eligibility perspective.
21:45.370 --> 21:48.750
So they do have to share priority dates. So whichever one that you're
21:48.760 --> 21:52.370
porting over, whichever rejections notice of allowance allow
21:52.870 --> 21:56.680
claims reporting over, they do have to share a priority date. The application must have
21:56.690 --> 22:00.160
at least one allowed claim from that other participating office.
22:00.190 --> 22:03.610
And all the claims to the USPTO must tie back to
22:03.620 --> 22:07.500
the claims in the Foreign Office, almost identical or narrower.
22:07.510 --> 22:12.300
And from what I can see, that the more differentiated
22:12.310 --> 22:15.390
or that's where you're going to have a lot higher cost, because you will still
22:15.400 --> 22:18.910
have to tie all of those elements to the allowed claim. So Let's
22:18.920 --> 22:22.630
say you drastically amend the claims to maybe format them
22:22.640 --> 22:25.960
to a little bit different embodiment or something during, like a preliminary amendment
22:25.970 --> 22:28.750
in the Us, you're going to have to go through a lot of work to
22:28.760 --> 22:32.140
tie those out in the claim chart, essentially to show that those that were
22:32.150 --> 22:35.320
allowed still pertain to those that
22:35.330 --> 22:38.470
you're now pursuing. And so that's where costs can really increase from, like an
22:38.480 --> 22:41.360
attorney fee or agency perspective.
22:42.920 --> 22:46.460
And then also the USB to cannot have started a review of
22:46.470 --> 22:50.480
the patent prior to the PPH request. That is true. But as all you know,
22:50.980 --> 22:54.220
probably just like the the
22:54.230 --> 22:57.670
Track one process in the Us. If you
22:57.680 --> 23:01.410
do a continuation or divisional from that application, you can then do
23:01.650 --> 23:05.250
a PPA request at that time. Similarly to being able to do a Track one
23:05.260 --> 23:08.670
request at that time. So just because you international pace and didn't
23:08.680 --> 23:11.850
do the request or maybe the request was rejected, doesn't mean that you still can't
23:11.860 --> 23:14.990
do it. You'll just have to do a new filing. So of course, that is
23:15.000 --> 23:16.850
extra cost. From a client perspective,
23:18.850 --> 23:22.610
Here's the form. I mean, nothing crazy. You have to
23:22.620 --> 23:25.970
identify the offices that you're taking the work from. You supply
23:26.060 --> 23:29.720
the information you have to submit an information disclosure statement
23:29.730 --> 23:33.270
about those references that were cited. And then Here's where the bulk of the work
23:33.280 --> 23:36.800
comes from. If it's a one for Wine allow claims claims that
23:36.810 --> 23:40.340
you're taking into the Us, then it's really easy. But the more
23:40.860 --> 23:44.520
extract those get, the more distant those two claims that get
23:44.530 --> 23:48.420
the work of and have to do the
23:48.430 --> 23:51.720
deal will tell you if you're accepted or not, if you are accepted, you're going
23:51.730 --> 23:54.840
to be advanced ahead. If not, you'll get one opportunity to
23:54.930 --> 23:58.110
fix it, and then if not, then you'll be finally rejected.
23:58.680 --> 24:01.890
So this is our thing. Move forward. Last time we were talking about some EPO
24:01.900 --> 24:05.220
works, and I had this recollection from a previous interaction
24:05.230 --> 24:08.430
with the European associate around this. And this is I think what
24:08.440 --> 24:12.210
he was alluding to is that in Europe it doesn't actually buy you that much
24:12.710 --> 24:17.310
because you all are familiar. Europe has such a fear standards
24:17.320 --> 24:21.130
around disclosure that they're still going to do their
24:21.140 --> 24:25.000
own search and examination, and they're still going to independently consider whether the
24:25.010 --> 24:28.570
application meets all of their requirements. And so you're not going to gain much by
24:28.580 --> 24:32.350
having this form prepared and submitted to the depot. But a
24:32.360 --> 24:35.920
better way to do it if you have interest in so called accelerated
24:35.950 --> 24:39.750
examination in Europe is to do their own pace. So there's
24:39.760 --> 24:41.940
less requirements in PPA, it's still free.
24:42.440 --> 24:45.920
And Interestingly, the request is
24:45.930 --> 24:49.580
not placed in the public file, so somebody wouldn't know. And I guess maybe
24:49.590 --> 24:53.390
the advantage is there that you would get potentially an issue and
24:53.400 --> 24:56.720
a lot quicker, but nobody would know that you were getting it quicker, whereas a
24:56.730 --> 25:00.490
PH request is in the public fast. People know that you're trying
25:00.500 --> 25:03.880
to fast track it. And then the other interesting piece from
25:03.890 --> 25:07.330
like a Pace or PPH perspective, the UK Patent Office
25:07.340 --> 25:11.140
actually be used to more favorably than the European Patent Office.
25:11.170 --> 25:14.620
Now that especially now that Brexit has occurred.
25:14.630 --> 25:18.520
But so I think that's interesting. So if you have an HSM
25:18.530 --> 25:22.210
fast track and you could actually do it through pace with Europe, but if you
25:22.220 --> 25:25.450
do multiple cases of your client has multiple pending applications
25:25.460 --> 25:28.690
in Europe and you do all of them through Pace, they are likely going to
25:28.700 --> 25:32.470
ask you to Select maybe only one or 2 of those to go through Pace
25:32.480 --> 25:34.840
instead of all of them. So they are going to try to, I think,
25:35.060 --> 25:39.140
you know, distribute the Pace availability across
25:39.350 --> 25:43.250
interested parties. You can't do 10 applications,
25:43.260 --> 25:47.090
for example, and then the results that I see
25:47.100 --> 25:50.210
for themselves, it does sound like in a lot of the countries, it does result
25:50.710 --> 25:54.230
in a higher grant rate and a faster disposition. I think
25:54.240 --> 25:57.830
Europe would probably be the exception there just because of some
25:57.840 --> 26:01.210
of the some of the rolling that I've heard. But in a lot of other
26:01.220 --> 26:02.950
countries can do wonders.
26:03.580 --> 26:07.240
Some of the caveats that kind of were raises that
26:07.520 --> 26:11.450
if the PPH
26:11.460 --> 26:15.110
country that you're going into based on previous work,
26:15.660 --> 26:19.650
if their parameters are going to be more rigid,
26:19.660 --> 26:23.460
you actually could end up kind of weakening your other rights because the Examiner may
26:23.470 --> 26:26.870
make comments that could weaken those rights.
26:27.370 --> 26:30.770
Comments around novel pine obviousness, which is always the case
26:30.780 --> 26:34.630
anyway. But, you know, it's all in a much shorter time
26:34.640 --> 26:38.950
frame and really clearly based on the same claim of medicine claims that
26:38.960 --> 26:42.670
you're pursuing in other countries. And also, of course,
26:42.680 --> 26:45.430
each participating office is going to do their own support, clarity,
26:45.440 --> 26:49.810
enablement criteria. And PPH, well, free from
26:49.840 --> 26:53.080
a fee perspective, may not be as cost effective from
26:53.090 --> 26:56.560
a preparation perspective. So just again, depends on what claims you're going to take
26:56.570 --> 26:59.080
into that country versus what was already allowed. So I know,
26:59.660 --> 27:03.170
David, you had talked about how you all do that quite frequently from
27:03.180 --> 27:06.710
a Us perspective, and I would assume that in those cases you pretty
27:06.720 --> 27:10.370
much keeping the claims as is or what's your
27:10.380 --> 27:13.560
experience in that regard. Yeah. I mean,
27:14.310 --> 27:18.390
mostly I'm laughing because I just went
27:18.400 --> 27:21.690
back and forth this is three times with the patent office to try to get
27:21.700 --> 27:25.500
a PPA request. But Yeah,
27:25.510 --> 27:28.890
normally, Yes, we'll file you get a positive is.
27:29.160 --> 27:32.650
And then especially for clients that we have
27:32.660 --> 27:36.250
that are overseas, they'll often do the Pct first and then go
27:36.260 --> 27:39.580
U S National. So then it wouldn't have been examined yet.
27:39.590 --> 27:43.030
A lot of our Us clients that final in the Us versus it's just already
27:43.040 --> 27:45.650
in prosecution, you know, by the time we get that.
27:46.040 --> 27:47.480
But Yes, I mean,
27:48.270 --> 27:51.400
independent claim tying one to 1,
27:51.930 --> 27:55.630
and then the
27:55.640 --> 27:59.080
dependent claims can switch. But one thing I just learned
27:59.090 --> 28:02.290
with this recent case, it's talking about is that
28:02.950 --> 28:06.580
they really do like especially if it's complicated, one claim per
28:06.640 --> 28:10.120
line, rather than saying all these dependent claims refer
28:10.210 --> 28:13.210
back to this, or especially if it's complicated,
28:14.170 --> 28:17.960
I think we've gotten some incorrect kind of rejection because
28:17.970 --> 28:21.590
they were confused. So just put one claim per
28:21.600 --> 28:25.610
line and make it really straightforward in the remarks, kind of why
28:25.620 --> 28:29.180
it's how it corresponds to the E to
28:29.190 --> 28:32.970
the Pct application. That's helpful.
28:33.000 --> 28:37.720
I think a lot of time can be spent on those interesting.
28:38.340 --> 28:41.710
So Yeah, that's all I kind of had because I think that's
28:41.720 --> 28:45.360
something like we don't do it very frequently, but I think, you know,
28:45.370 --> 28:48.930
kind of knowing from a Us perspective, it's kind of interesting way to get something
28:48.940 --> 28:52.750
a little faster, but maybe not paying the crazy 2,000
28:52.760 --> 28:57.320
some dollar fee set. Now they've increased it. I think again. So I
28:57.820 --> 29:00.110
think it's an interesting path.
29:01.320 --> 29:05.700
Yeah. We tend to do it a lot. And what
29:05.710 --> 29:09.360
we kind of recommend our clients, and I don't have the original source
29:09.370 --> 29:13.260
on this that I can ask if people are interested is that in
29:13.680 --> 29:17.790
the Us, 90% of approved PPH applications
29:18.270 --> 29:22.460
will be allowed. It will
29:22.470 --> 29:25.910
be allowed within one year, about PH is approved in the Us.
29:25.940 --> 29:29.540
That's great. If you can do it, if it's eligible,
29:29.600 --> 29:34.310
we always highly recommend because like you said, it's also free. And creating
29:34.320 --> 29:37.700
that table does take some work, but it's not too bad.
29:37.820 --> 29:42.300
So we always recommend that to clients in
29:42.600 --> 29:46.530
your experience, do you? Because I was actually just talking to a client around their
29:46.540 --> 29:50.000
Pct and how we could do any number of
29:50.010 --> 29:53.330
bypass applications in advance of the 30 month time just because
29:53.460 --> 29:57.940
they're trying to figure out their timeline for doing different things.
29:58.030 --> 30:01.960
And do you need to wait for actual National to PH
30:01.970 --> 30:05.180
in the Us? Or could you do? I mean, I assume you could do once
30:05.190 --> 30:08.480
you get a report, you can do a Con from it
30:08.780 --> 30:12.010
and do the PPH with it. Yep. Exactly.
30:12.020 --> 30:15.490
And you know, that's funny. You mentioned that too. This in the last
30:15.500 --> 30:19.310
year or two, we almost never do
30:19.320 --> 30:23.060
National phase filings anymore. We almost always do cons from
30:23.070 --> 30:27.460
PPHS, even if you're at the 30 months points too,
30:27.470 --> 30:31.300
because it's just easier for our paralegal
30:31.310 --> 30:34.570
support team and everything. Like they know all the
30:34.580 --> 30:38.940
systems in the Us, they don't have to go into the the
30:39.090 --> 30:42.690
Pct kind of system to get it go into National has
30:42.700 --> 30:46.110
something on their side is easier, but it's also I think,
30:46.200 --> 30:46.590
you know,
30:50.000 --> 30:53.490
I'm going to pause now. I can't remember exactly
30:53.990 --> 30:57.980
why, but I feel like there's also some more flexibility
30:57.990 --> 31:01.310
on maybe it's what you said, actually, just about the timing.
31:01.320 --> 31:04.820
There is more flexible because you can't do a
31:04.880 --> 31:08.720
track one on National base and
31:08.730 --> 31:12.250
you can't you could do a PPA, I would assume off National fees.
31:12.260 --> 31:15.850
And of course, but you can't do a track one and you can't obviously
31:15.860 --> 31:19.420
you can't add matter on a National phase
31:19.430 --> 31:23.050
that you can if you do a CIP, not classical bypass.
31:23.060 --> 31:26.380
Right. But I think it is more
31:26.390 --> 31:29.710
flexible for sure. I think I couldn't tell you. I'd have to ask
31:29.720 --> 31:33.390
Alisa, what we typically do,
31:33.400 --> 31:36.630
whether we do National phase, if we do, even if we
31:36.640 --> 31:40.300
wait for the 30 month time window. I actually couldn't tell you offhand what
31:40.310 --> 31:43.450
we do typically, but does provide more options, though.
31:44.650 --> 31:48.740
Yeah. Awesome. Well, anybody have anything else
31:48.750 --> 31:52.430
to share or completely stories or
31:52.930 --> 31:56.810
completely tangential point because you scared flash confused me
31:56.820 --> 32:00.710
a bit with your comment about the UK office
32:01.340 --> 32:04.940
with Brexit. And so as far as I can tell, the UK
32:05.000 --> 32:08.690
Patent Office is still part of the European Patent Convention.
32:08.700 --> 32:11.780
Yeah, that's two separate things from the EU.
32:12.140 --> 32:15.770
So there's no there's no additional hassle
32:15.780 --> 32:20.450
now going from Pct into repo
32:21.190 --> 32:24.650
into the UK. That process is still
32:24.660 --> 32:27.940
there. I guess it's just if you file
32:27.950 --> 32:31.660
directly into the UK office, you can you
32:31.780 --> 32:35.590
can make use of PPH more successfully
32:35.600 --> 32:38.980
than elsewhere. Yes, that's fair. Yes, things for that,
32:38.990 --> 32:41.290
then you can still get to UK.
32:42.430 --> 32:44.530
But if you were to file direct in the UK,
32:45.580 --> 32:49.420
for whatever reason, which isn't at least I haven't
32:49.430 --> 32:53.110
seen it be too common, but I imagine it's much cheaper if the
32:53.120 --> 32:55.900
UK is you're only interested country.
32:57.140 --> 32:58.370
I have a question.
33:00.220 --> 33:03.560
When you do a continuation
33:03.830 --> 33:06.920
from Pct versus a 371,
33:06.930 --> 33:10.430
there's some subtle differences in legally how it's
33:10.440 --> 33:14.420
treated. So I hear that there may be some advantages for PP
33:14.840 --> 33:18.620
the treatment or accelerated procession treatment,
33:18.630 --> 33:22.220
at least in the U S, but I was just wondering if anybody
33:22.720 --> 33:26.210
has any experience on the difference. Is it legally how a 3 71
33:26.220 --> 33:29.570
versus 11 continuation or treated from a Pct?
33:29.900 --> 33:35.330
Would it be? I mean, this is just conjecture on my part. So the
33:36.830 --> 33:40.280
National stage process and Pct are all under the
33:40.290 --> 33:43.880
Pct rules, and so their
33:44.060 --> 33:48.240
views on priority and inventor
33:48.250 --> 33:51.840
ship are all under the Pct rules. But if you then
33:51.850 --> 33:55.770
take it out of the technical PCP pathway and go into
33:56.540 --> 33:59.960
the Us pathway, which is the continuation practice,
34:00.170 --> 34:03.860
then I'm wondering then if the Us log more applies from like,
34:04.460 --> 34:08.340
especially because I know there's a lot of provisions around how
34:08.350 --> 34:12.510
to kind of maintain priority continuity that in the PCP process,
34:13.010 --> 34:16.230
or maybe a little bit different from a Us process. So I'm wondering
34:16.240 --> 34:19.970
if you kind of jump between those that you
34:20.470 --> 34:24.290
just need to make sure that you're either staying in the Pct
34:24.320 --> 34:27.500
rules, if you stay with National phase versus adhering
34:27.510 --> 34:30.830
to Us, because even if you would hear the Us that stay the National phase,
34:31.020 --> 34:36.630
that's not going to be viewed favorably from you, no later upholding
34:36.640 --> 34:39.960
your rights. And it was only to answer as much as, like a conjecture
34:39.970 --> 34:42.600
around kind of how that behaves.
34:44.870 --> 34:48.660
Thank you. That's a good question. I may
34:49.160 --> 34:52.500
look into that a little bit more. Now. That was just
34:52.510 --> 34:56.850
based. I've been looking more into how Europe treat
34:56.860 --> 35:00.180
assignments and priority versus the Us is definitely
35:00.190 --> 35:03.840
different part that's under the Pct process. And so that's a
35:03.850 --> 35:07.260
great point, Steve, and I'm definitely going to look into that personally. So if
35:07.270 --> 35:09.300
I find anything interesting, I'll share it with the group.
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Thank you. Awesome.
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Well, if nobody has anything else,
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then I will set you all free. All right.
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Thank you, Ashley. Yeah. Anything? A bye,
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everybody. Have a good day. All right. That's all for today, folks. Thanks for listening.
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And remember to check us out at arpeton com for more great podcasts,
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blogs and videos covering all things patent strategy. And if
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you're an agent or attorney, I would like to be part of the discussion or
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an inventor with a topic you'd like to hear discussed. Email us at podcast
35:41.300 --> 35:45.090
at Aurora Patents com. Do remember that this podcast did not constitute legal
35:45.100 --> 35:47.730
advice. And until next time, keep calm and patent on.
