What it costs to get a US application on the Patent Prosecution Highway?

Previously I blogged about what it might cost to get a US application examined fast on Track I and by Accelerated Examination and by an old-fashioned Petition to Make Special and under Rule 496.  Now let’s talk a bit about what it might cost to get a US application examined fast on the Patent Prosecution Highway.

The assumption here is that the predicates for Highway treatment already happened and have already been paid for.  The further assumption is that the would-be Highway case has already been filed in the USPTO or at least that the client has already budgeted the money to file that case.

So this blog article asks how much it might cost to get such a case onto the Highway.

As a bit of review, one predicate is that some ISA (PCT international searching authority) or some IPEA (PCT international preliminary examining authority) found at least one claim to be patentable.  Which permits use of PCT-PPH.

Alternatively a predicate is that some non-US patent office found at least one claim to be patentable.  Which permits use of PPH (as distinguished from PCT-PPH).

For the practitioner, the chief tasks for the Highway are:

  • prepare and file an IDS (information disclosure statement) disclosing all of the references developed in the PCT case or in the non-US case
  • make sure that any and all other IDSs that need to be filed get filed
  • prepare a claim correspondence table showing how the claims in the US case correspond to favorably treated claims in the PCT or foreign work product
  • prepare and file the PPH request form

It will be appreciated that the first two steps would have needed to be carried out regardless of whether or not the Highway was being pursued.  So the client will have already budgeted for those steps, or the money will already have been spent.

Other than the claims correspondence table, the request form itself is easy to complete.  Just a few blanks need to be completed.

What remains is to work out the claims correspondence table.  This can be nontrivial, depending on how closely the proposed US claims do or do not match the earlier (favorably treated) claims.

In a simple case (the case I like best), the Written Opinion treats all claims favorably, and all claims are already in good form for purposes of US filing.  The practitioner can then simply enter the US national phase and the claims correspondence table is simple.  It simply says (for example) that claims 1-20 are identical to claims 1-20, and that this means they sufficiently correspond.

But other cases can be more complicated.  I have struggled with PPH cases where it took an hour or more to agonize through the preliminary amendment that was to be filed in the USPTO, and to try to match its claims up with (differently numbered) claims in the earlier documents.

When it’s an easy case (all claims treated favorably, and US claims identical to favorably treated claims) then my habit is to do the PPH filing at “no charge”.  Otherwise I might charge $250 or $500.

(Note that this does not include the cost of the IDSs, which would have been incurred even without PPH.)

What do you think?  Please post a comment.

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