Navigating the Patent Prosecution Highway and Other Accelerated Filing Options

Evaluating the Different Options, Weighing the Benefits and Risks, Obtaining Patent Protection

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, August 31, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel on the use of the patent prosecution highway and other ways to fast track examination. The panel will examine the pros and cons of options and will discuss factors to consider when determining whether to pursue accelerated prosecution and which avenue to take. The panel will offer best practices for avoiding common mistakes and obtaining patent protection.

Description

Options are available to patent applicants to obtain quicker resolution of their applications, including the Patent Prosecution Highway (PPH), Track One Prioritized Examination, and First Action Interview.

For example, the PPH allows applicants who have received positive rulings on claims from a participating office to request accelerated prosecution of corresponding claims in another participating office. As a result, the applicant may more quickly obtain a patentability decision in the second office.

Further, the PPH has an overall allowance rate of approximately 81% (and about a 22% first action allowance rate), which is significantly higher than applications following the regular path, which has an allowance rate of about 53%.

Before seeking an accelerated filing, patent applicants and their counsel should consider several factors, including the breadth or narrowness of the claim, the strictness of the office of earlier examination, and how countries treat art and inventions.

Listen as our authoritative panel of patent attorneys examines the patent prosecution highway and other ways to fast track or accelerate examination. The panel will discuss the pros and cons of options for faster prosecution. The panel will also examine factors that applicant’s counsel should consider to determine whether to pursue accelerated prosecution and which avenue to take. The panel will further discuss common mistakes and offer best practices for avoiding those mistakes and obtaining patent protection.

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Outline

  1. PPH
    1. Benefits/risks
    2. Eligibility
    3. Documents
    4. PPH examining procedures
    5. Special PPH issues
    6. Decision process
    7. Factors to consider
  2. Track One
  3. Track Two (e.g., normal prosecution)
  4. First action interview
  5. Other avenues to consider

Benefits

The panel will review these and other key issues:

  • What options are available to accelerate a patent prosecution, and what are the pros and cons of each?
  • What factors should patent counsel consider when determining whether seeking accelerated patent protection is the best avenue for prosecution?
  • What are the key considerations for patent counsel drafting applications when accelerated patent protection is anticipated?

Faculty

Fischer, Ralph
Ralph G. Fischer

Shareholder
Buchanan Ingersoll & Rooney

Mr. Fischer practices in the fields of patent, trademark, copyright and unfair competition law. His work involves a...  |  Read More

Stewart, Duane
Duane A. Stewart, III

Shareholder
Buchanan Ingersoll & Rooney

Mr. Stewart integrates complex science and legal matters at a high level. He specializes in explaining complex...  |  Read More

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