21 July 2012

The UK Extends the ‘Montainai’ Pilot for the Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is a series of bilateral agreements between a number of Patent Offices, which collectively provide accelerated and streamlined patent prosecution by allowing information to be shared between the participating Patent Offices.

 The PPH allows patent applicants who have received a favourable decision by one Patent Office to request an accelerated examination of a corresponding patent application filed at another participating Patent Office. Although a favourable decision from one Patent Office does not necessarily mean that the corresponding patent application will receive a favourable decision from the other Office, the likelihood of this happening is generally increased. Accordingly, the PPH is essentially a means for participating Patent Offices to benefit from the work (such as patent search & examination) that has already been carried out by another Patent Office, thereby helping to reduce patent backlogs and minimising the duplication of work carried out by the Offices. The specific goal of the PPH is to reduce patent examination workload and improve patent quality and consistency between the different Offices.

PPH agreements have traditionally included restrictions based on both the order in which corresponding patent applications are filed, and the countries from which patent applications initially claim priority. However, as of 15 July 2012, the UK Intellectual Property Office (IPO) has extended the so-called “Mottainai” pilot program currently being trialled as part of the IPO’s PPH agreements with the Japanese Patent Office (JPO), the United States Patents and Trade Marks Office (USPTO) and the Canadian Intellectual Property Office (CIPO). The Mottainai program, which literally means “wasteful” in Japanese, allows requests for acceleration to be made under a PPH agreement irrespective of either the order in which the various patent applications are filed, or the original priority that is claimed by the co-pending applications.

Venner Shipley believes that this will come as welcome news to patent applicants, as it will further improve the accessibility and utility of the PPH, accelerating the patent prosecution process and helping to reduce associated costs.