• Jeremy Rutman

The Patent Prosecution Highway, rule 17C and everything in between

Updated: Apr 29

The patent prosecution highway allows for accelerated patenting by reusing examination results from one office in another office. For instance if you have claims for a patent application allowed in the EU (generally listed as EPO or EP in patent matters) , you can get those claims 'fast-tracked' in Israel[2] or a number of other countries participating in the PPH program, without any additional fee. The bilateral relationships are shown below:

The reused work 'can include'

  • the written opinion of the International Searching Authority,

  • the written opinion of the International Preliminary Examining Authority, or

  • the international preliminary examination report issued within the framework of the PCT, subject to certain conditions

In most cases, a positive report or allowed claim paves the way for allowance in the partner PTO, but the letter of the law doesn't require it.

There is a similar-sounding law in Israel called by its paragraph number, '17C' [3]:


Where the requirements specified below are met by an application, then such be deemed to have complied with the provisions of section 4, 5, 8, 12 and 13:

  • (1) the applicant submitted a patent application for the same invention (in this section - parallel application) and was granted such patent in a state whose name appears in the list published by the Registrar in The Official Gazette(in this section - parallel patent), and all the following holds true:

  • (a)priority right was lawfully claimed for the patent application in Israel under section 10, by virtue of the parallel application;

  • (b)priority right was claimed for the parallel application under the Law applicable to thereto, by virtue of the patent application in Israel; (amendment no. 6)2002

  • (c)priority right was lawfully claimed for the patent application in Israel by virtue of another application for protection submitted in a Member State, and by virtue of such application the priority right is claimed for the parallel application under the Law applicable thereto;

  • (2) the applicant requested in writing that the provisions of this section be applied to his patent application;(amendment no. 9)2011

  • (3) the applicant providedthe Officewith a translation ofthe claims in the parallel patent, to such language as in thepatent application which was submitted in Israel;

  • (4) the claim or claims in the application are identical to the claims in the parallel patent, but the application can include fewer claims that those in the parallel patent;

  • (5) the applicant submitted a description and drawings identical to those in the parallel patent, or a description and drawings as said in section 12.


The list: Austria, Australia, US, UK, Germany, Denmark, EU, Russian Federation, Japan, Norway, Canada, and Sweden.


The allowance of claims in Israel under section 17(c)is on the basis of granted claims in an approved foreign jurisdiction, and not on the basis of an allowance or an indication in a PCT WO/ISA that claims are allowable. PPH, on the other hand, may be based on allowance and/or favorable WO/ISA. But beware, the wording of the PPH is simply that the later examination office may 'exploit the search and examination results' of the earlier examination office (see attached doc on IL-EPO PPH). Therefore there is partial but not complete overlap between these provisions, and one to cover all bases you may want both in applicable cases.

In fact I have found this paragraph relating to the issue:


Is it possible to apply for entrance to the PPH along with applying for modified examination in accordance to Article 17c or Commissioners notice M.N. 70?


Yes, advancing the application out of turn (PPH) and the method of examination it undergoes are not dependent on one another. A PPH application only relates to advancing an application out of turn and is one of the "on the spot" (Article 19A of the law) routs [sic] of expediting an examination, and an application according to Article 17c of the law or commissioners circular M.N. 70, relate to the method of examination the patent application will undergo.


The pdf below shows the various requirements for the PPH in different jurisdictions.

matrix_globalpph_en
.pdf
PDF • 231KB

[1] https://www.justice.gov.il/En/Units/ILPO/Departments/Patents/Pages/PPH.aspx

[2] https://www.iliplaw.com/files/pph-pct-pph-ilpto-epo-2020-10-29-1.pdf

[3] https://www.wipo.int/edocs/lexdocs/laws/en/il/il040en.pdf

Global PPH site https://www.jpo.go.jp/e/toppage/pph-portal/globalpph.html

ILPO-EPO PPH and PCT PPH
.pdf
PDF • 330KB

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