The Patent Prosecution Highway (PPH) is a powerful tool for accelerating patent examination processes, and South Korea’s participation in this global initiative offers significant advantages for inventors and businesses. In this column, we provide an in-depth introduction to Korea’s PPH system, covering its concept, application process, benefits, and associated costs. Whether you’re an individual inventor or a multinational corporation, understanding the PPH can streamline your patent strategy in Korea and beyond.
What is the PPH and Its Purpose?
The Patent Prosecution Highway (PPH) is a cooperative program between patent offices worldwide, designed to expedite the examination of patent applications. Under this system, a patent office (the "Office of Later Examination" or OLE) leverages the examination results from another patent office (the "Office of Earlier Examination" or OEE) where at least one claim has been deemed patentable. For example, if a patent application filed in Korea has corresponding claims allowed in the United States or Japan, the applicant can request PPH in Korea, prompting the Korean Intellectual Property Office (KIPO) to prioritize and fast-track its examination based on the prior decision.
The primary goals of the PPH are:
- To enable applicants to secure patent rights more quickly.
- To enhance examination quality by sharing results between patent offices.
- To reduce redundant examination efforts, improving efficiency and consistency in global patent grants.
By minimizing delays and fostering collaboration, the PPH supports innovators in achieving faster, more reliable patent protection across multiple jurisdictions.
Who Can Use the PPH in Korea and What Are the Requirements?
To take advantage of Korea’s PPH program, your application must meet specific eligibility criteria. The PPH applies to Korean patent applications paired with corresponding foreign applications—typically linked through priority claims under the Paris Convention or as part of the same Patent Cooperation Treaty (PCT) family. Below are the key requirements:
1. Priority Relationship
- The Korean application (or its PCT national phase entry) must share the earliest priority date or filing date with the corresponding foreign application. This ensures both applications belong to the same patent family.
2. Patentability Decision from a Foreign Office
- At least one claim in the corresponding foreign application must have been deemed patentable (e.g., marked as "allowable" or "patentable") by the OEE. This decision serves as the basis for requesting accelerated examination in Korea.
3. Claim Correspondence
- All claims in the Korean application must "substantially correspond" to the claims allowed by the foreign office. This means they must be identical, similar, or narrower in scope. If the Korean claims exceed the scope of the allowed foreign claims, amendments are required to align them before filing the PPH request.
4. Examination Status
- Unlike many jurisdictions that require PPH requests before examination begins, KIPO offers flexibility: you can file a PPH request even after examination has started. This unique feature allows applicants to leverage foreign allowance decisions at various stages of the Korean process.
Additionally, the PPH extends to PCT-PPH, where a positive Written Opinion (WO/ISA) or International Preliminary Examination Report (IPER) from the PCT international phase can be used to request expedited examination for a Korean national phase application, provided the same priority date applies.
The PPH is available across all technical fields—electronics, machinery, chemistry, biotech, and more—making it a versatile tool for applicants, especially those managing simultaneous filings in multiple countries.
How to Apply for PPH in Korea: Process and Required Documents
Filing a PPH request with KIPO is straightforward, but it requires careful preparation of specific documents. Here’s a step-by-step guide:
Application Process
- Confirm Foreign Allowance: Verify that the corresponding foreign application has at least one claim deemed patentable.
- Request Examination in Korea: Submit an examination request for the Korean application (if not already filed), as this is a prerequisite for PPH eligibility.
- Submit PPH Request: File the PPH request form, attaching the required documents (detailed below).
- KIPO Review: KIPO evaluates the request and documents. If approved, the application is designated for prioritized examination. If deficiencies are found, KIPO may request amendments within a specified period; failure to comply reverts the application to regular examination.
- Expedited Examination Begins: Once approved, examination proceeds much faster than the standard timeline.
Required Documents
- Copy of Allowed Claims and Translation: Provide the claims deemed patentable by the OEE, along with a Korean translation (English originals may be accepted in some cases).
- Foreign Examination Results and Translation: Submit copies of all office actions (e.g., examiner opinions, notices of allowance) from the OEE, with translations into Korean.
- Prior Art References: Include copies of prior art cited by the foreign examiner. If KIPO can access these electronically (e.g., via agreements with other offices), a list of references may suffice.
- Claim Correspondence Table: A table showing how each Korean claim aligns with the allowed foreign claims, explaining their identical or narrower scope.
These documents must adhere to KIPO’s PPH request form guidelines, available online. KIPO has adopted the IP5 common PPH form, simplifying the process by allowing some document waivers if basic details are provided. Requests are typically submitted electronically via KIPO’s online portal, ensuring efficiency.
Advantages and Limitations of Using PPH in Korea
Advantages
- Faster Examination
- PPH significantly shortens the wait for a first office action. In Korea, PPH applications are processed in about 5 months on average, compared to 21 months for regular applications. This speed is invaluable for securing early patent rights.
- Higher Grant Rate
- PPH applications in Korea boast an 89% allowance rate, far exceeding the 66% for standard applications. The reliance on pre-vetted claims reduces rejection risks.
- Streamlined Process
- Over 30% of PPH cases in Korea are granted after a single office action, compared to just 10% for regular cases. This efficiency saves time and reduces prosecution costs.
- Global Portfolio Strength
- Early rights in Korea can accelerate PPH requests in other countries, enabling synchronized patent protection across key markets—a boon for multinational IP strategies.
Limitations
- Dependence on Foreign Allowance
- You need a patentable claim from a foreign office first. If foreign examination is pending or rejected, PPH isn’t an option.
- Restricted Claim Scope
- Korean claims must align with the foreign allowance, potentially limiting broader protection in Korea unless amendments are carefully managed.
- Risk of Missing Divisional Opportunities
- In Korea, divisional applications can only be filed before a final rejection or first office action. PPH’s speed may lead to immediate allowance, closing the window for divisionals unless proactively filed alongside the PPH request.
- No Guarantee of Approval
- While foreign results are respected, KIPO retains independent authority to reject claims based on Korean patent law (e.g., novelty, inventive step, or specification issues).
Despite these caveats, the PPH’s benefits—speed, higher success rates, and strategic alignment—often outweigh its limitations.
Latest Trends and Practical Examples
Since the 2010s, KIPO has expanded its PPH network, partnering with major offices like the USPTO, JPO, EPO, and CNIPA under the IP5 PPH framework, as well as dozens of others via the Global PPH (GPPH). This broad reach allows Korean applicants to leverage PPH in numerous jurisdictions.
Use Cases
- Korean Companies Going Global: Large Korean firms often secure patents in the U.S. or Japan first, then use PPH to fast-track approval in Korea. Conversely, some file in Korea initially, using KIPO’s allowance to expedite foreign PPH requests (e.g., at USPTO, where PPH boosts grant rates and cuts wait times).
- Emerging Markets: Pilot programs with countries like Vietnam, and ongoing talks with India and Indonesia, signal growing opportunities for Korean firms in new regions.
Transparency and Data
KIPO and IP5 partners publish PPH statistics, revealing shorter examination timelines and fewer office actions. This data helps applicants strategically decide when PPH is most advantageous, cementing its role as a cornerstone of global IP planning.
Costs of PPH in Korea: A Domestic and International Comparison
The PPH is cost-effective compared to other accelerated examination options. Here’s the breakdown:
In Korea (KIPO)
- Official Fee: A PPH request incurs a 200,000 KRW (approx. $150 USD) priority examination fee, applicable to all expedited reviews, not just PPH.
- Additional Costs: Agent fees for document preparation or translations may apply if using a patent attorney.
International Comparison
- United States (USPTO): No additional PPH fee; costs are limited to attorney fees for filing.
- Japan (JPO): Free PPH requests, with only procedural costs.
- Europe (EPO): No PPH fee; other acceleration programs (e.g., PACE) are also free.
While Korea’s 200,000 KRW fee is modest, applicants must factor in prior costs (e.g., foreign examination fees) and early annuity payments if the patent is granted quickly. However, the market advantages of early protection often justify this investment.
Conclusion
Korea’s PPH system is a game-changer for patent applicants seeking speed, efficiency, and global alignment. With a clear process, flexible rules, and proven benefits—backed by a modest fee—it’s an essential tool for navigating today’s competitive IP landscape. At Pine IP Firm, we specialize in guiding clients through the PPH process, ensuring your innovations gain swift, robust protection in Korea and beyond. Contact us to explore how PPH can enhance your patent strategy!
