Patent Prosecution Highway (PPH) is a new alternative for applicants, subject to various conditions. The main goal of the PPH co-operation is to accelerate examination of patent applications worldwide and therefore, many states have already entered into agreement on PPH.

The Icelandic Patent Office has launched two PPH pilot programmes, one with the United States Patent and Trademark Office (USPTO) and one with the Japanese Patent Office (JPO). The aim of the pilot programme is mainly to provide opportunity for Icelandic entities to request accelerated examination in the United States and Japan and the same applies to accelerated examination in Iceland for applicants who have filed applications at the USPTO and JPO.

The essence of PPH co-operation is that when an application has been filed in one of the relevant states, i.e. office of first filing (OFF), the applicant may with reference to the PPH programme, request accelerated examination in the office of second filing (OSF). The main requirements are that a corresponding application has been examined by the OFF and that one or more claims of the application have been determined to be patentable/allowable. The OSF is however not obliged to accept this former examination, the procedure merely includes that the OSF will make, as possible, use of the examination already performed.

Accelerated examination based on PPH is always at the applicant's choice – the procedure is however free of charge.

Guidelines and forms on the procedures in Iceland, the USA and Japan may be accessed in the index on the left side. Note that different guidelines apply for national PPH and PCT-PPH routes.

The Nordic Patent Institute, of which Iceland is a party, has also launched PPH pilot programmes with various countries for PCT applications examined by NPI. Further information on the projects may be found on the NPI website.

Requirements for a request for PPH

In order to request for accelerated examination, the following requirements must be fulfilled:

1. The application to OSF must be a national application, corresponding to an application which the OFF has examined, e.g. be based on priority in accordance with the Paris Agreement from a prior application or a PCT application referring to a corresponding application filed with the OFF.
2. The OFF has determined one or more claims of the prior application to be patentable.
3. All of the claims pertained in the application to the OSF must be corresponding* to the claims which the OFF has determined patentable.
4. The application has not proceeded to examination with the OSF.

Guidelines and forms on the procedure in Iceland with regard to US and Japanese applicants may be accessed here. Note that different guidelines apply for national PPH and PCT-PPH routes.

What should be included in a request for PPH?

A request for PPH must be filed with the office where the applicant wishes to seek accelerated examination. A national application must have been filed at the time of the request.

A request for PPH in Iceland must contain the following documents:

•  A completed PPH request form
• Copies of letters concerning the examination of the OFF. The letters must be in a language accepted by the IPO as the OSF
• A copy of the claims which the OFF has considered to be patentable, in a language accepted by the IPO as the OSF
• A completed claims correspondence table
• Copies of the references cited by the OFF

PPH in general

• The PPH procedure in Iceland, USA and Japan is free of charge
• The examination period of PPH applications will become shorter
• Letter exchange and other communication with the relevant office will be fewer, which may result in lower costs
• A request for PPH is not an assurance for a granted patent, the offices decide how the documents provided with a request for PPH are used
• The applicant is bound by the claims of the application filed with the OFF, relatively no alterations are allowed*. Further guidelines of the Offices which Iceland has entered into agreement with may be found at the Offices websites.
• Time limits for filing a PPH request are provided at the relevant offices websites, the general rule is that the request must be filed before the office has started examination.

*Claims are considered to be”sufficiently corresponding” where, the claims are of the same or similar scope. The form of the claims or a slight difference due to translation is not considered to be of high relevance. The interpretation of the term may however differ between states, therefore the guidelines for each state must be carefully observed.