How To Build A Sustainable IP Maintenance Strategy For Global Businesses

Introduction

The Patent Prosecution Highway (PPH) is an effective international arrangement, a strategic cooperative framework between two or more Patent Offices, that aims to expedite the patent grant process in the global market. A PPH allows Patent Applicants in the PPH Member countries to request for expedited examination of their patent application in one member office, based on a positive examination result from another member office. For instance, if one PPH member country successfully allows the patent claims of an Applicant, such an Applicant can request for expedited examination of their patent application in all other PPH member countries.

Basically, if one Patent Office has already adjudicated a patent claim and established it as a successfully registrable invention, then all Patent Offices of the PPH members, referred to as the Office of Later Examination ("OLE"), are eligible to accelerate their examination process by relying on the other state's acceptance – instead of repeating the entire process.

Once an Applicant is granted a PPH request, their patent claims, if complete and ready for examination, will be examined in the OLE within 2 to 3 months from the grant of the PPH request. This fast-tracking of patent examination via PPH frameworks has emerged as a critical mechanism in the development of the global Intellectual Property Rights landscape, as it significantly accelerates the examination of patent applications and improves the efficiency of Patent Offices by doing away with procedural and administrative delays.

A PPH allows faster and cost-efficient patent grants, without compromising the quality of patent examination, as it relies on the competency and judgement of its member Patent Offices instead of re-examining the same patent claims across different Patent Offices globally.

The criteria for eligibility in a PPH is that at least one claim must be accepted by a Patent Office; the Applicant must have the same earliest priority date in both the member countries; and the patent application must contain identical claims with the previously allowed claims. Lastly, to apply for expedited examination via a PPH, substantive examination of the OLE application must not have begun at such time.

PPH may be broadly of two types, a Bilateral PPH programme, whereby two Patent Offices may agree to enter into agreement for expedited patent examination where the positive examination result of one Patent Office can be used by the other Patent Office. For instance, the Indian Patent Office was part of a bilateral PPH pilot programme with Japan from 2019 to 2022. The second type of PPH is the Global PPH, a collaborative agreement between multiple Patent Offices where the examination result of one Patent Office can be used by the other Patent Offices. As on date, the Global PPH includes 27 Patent Offices, including the USPTO, JPO, KIPO, to name a few.

Advantages of PPH for Applicants

Utilizing the PPH offers its member Applicants several advantages in seeking fasted and cost-efficient Patent protection across multiple jurisdictions.

1. Faster Patent Grants:
   PPH can significantly reduce prosecution timelines. Faster patent grants allow inventors to secure and commercial their IP with protected enforcement rights. This confidence further allows inventors to build global IP portfolios and expand internationally.
2. Higher Grant Rates:
   Pre-filing efforts by Applicants, such as ensuring similarity in Patent claims and drafting specifications acceptable globally, assists in higher acceptance rates amongst applications examined under the PPH arrangement, as compared to regular applications.
3. Cost Reduction:
   Given that Patent Offices can reuse search and examination work products, overall prosecution costs reduce drastically with fewer office actions issued in the case of PPH applications.

The benefits of PPH are evident from the Applicant's perspective as well as the Patent Offices' perspective. Waiting times, office actions, and overall prosecution expenses can all be considerably reduced with the help PPH applications. Especially in industries such as technology, electronics, and life sciences where early patent grants are crucial for business, PPH can offer a significant advantage.

Global Perspective on PPH

Today, most significant inventions are protected in more than one country. While international filings help businesses secure wider market coverage, they also bring delays, repeated examinations, and higher costs. The Patent Prosecution Highway (PPH) is a system designed to reduce these inefficiencies by allowing Patent Offices to share examination work. Where a Patent Office has accepted one or more claims, the Applicant can rely on that outcome to seek priority examination of corresponding claims in a participating jurisdiction. The second office is not bound by the earlier decision, but it may use the earlier search and examination as guidance.

PPH is becoming a crucial component of patent filing strategy on a global scale. Most major Patent Office actively participate in bilateral and international PPH initiatives including the United States Patent and Trademark Office, the Japanese Patent Office, the European Patent Office, and the Korean Intellectual Property Office. PPH have shortened prosecution schedules and decreased backlogs over time, especially for high-quality applications.

Most recently, Bahrain has signed an agreement with the Japan Patent Office, under which a bilateral PPH program will come into effect from January 1, 2026. Under this arrangement, Applicants whose claims are found allowable in Japan will be able to request accelerated examination in Bahrain. Bahrain has also signed several other PPH cooperation agreements with reputable Patent Offices, such as United States Patent and Trademark Office, China National Intellectual Property Administration, Korean Intellectual Property Office, European Patent Office, to name a few, as part of their endeavor to update and harmonize its patent system with international standards. This move places Bahrain among a small group of Middle Eastern jurisdictions actively using PPH to improve examination efficiency and attract innovation-driven investment. That said

For Indian Applicants, PPH is most commonly used outside India. Indian companies filing in the US, Japan, Europe, or South Korea frequently rely on PPH routes, especially through PCT-based filings. While India's own participation in PPH has been limited and cautious, Indian Applicants are already familiar with the benefits of the system when prosecuting patents abroad.

Indian Patent Office ventured into PPH arrangements in December, 2019, when the Indian Patent Office ("IPO") and the Japan Patent Office (JPO) entered into a three-year trial PPH. The PPH aimed at accelerating examination at the IPO based on a positive examination outcome from the JPO in certain identified fields, such as computer science, electric, electronic, information technology, physics, textiles, civil, mechanical, automobiles and metallurgy.

While the pilot PPH program ended in 2022, India's Annual Report 2022-23 indicates significant progress. During the first year,100 Japanese PPH requests were accepted in India, First Examination Reports ("FER") were issued in all cases, and 85 patents were granted. Six PPH requests were filed by Indian Applicants in Japan, resulting in four grants. In the second year, 47 patents were granted out of the 100 Japanese requests filed under the PPH program. Indian Applicants filed five requests in Japan. In the third year, 13 patents were granted out of the 100 Japanese requests, and one PPH request was filed in Japan by an Indian Applicant.[1]

The India-Japan PPO illustrated how an international collaboration streamlined and fastened the patent examination and grant process in India, without compromising on the quality of examinations.

To conclude, a PPH program is a transformative mechanism for global patent protection. PPH addresses inefficiencies in global patent prosecution mechanism and avoids time-consuming procedural checks, thereby reducing registration time frame, as well as procedure & administrative requirements.

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