Pages 69-82

INFORMATION FROM THE EPO

Patent Prosecution Highway pilot programme between the Trilateral Offices based on PCT work products

I. Background

The Trilateral Offices announced on 13 November 2009 that they intend to launch a new Patent Prosecution Highway (PPH) pilot utilising PCT work products as of 29 January 2010.

II. PCT-PPH pilot programme

The PPH was established to enable an applicant whose claims are determined to be patentable/allowable in the office of first filing (OFF) to have the corresponding application filed in the office of second filing (OSF) advanced out of turn for examination while at the same time allowing the OSF to exploit the work results of the OFF.

Under the PCT-PPH pilot programme a PPH request can be based on the latest PCT work product (written opinion of the ISA (WO-ISA) or international preliminary examination report (IPER)) established by one of the Trilateral Offices as ISA or IPEA, where this work product determines claims to be patentable/allowable.

Where the EPO is the ISA, or ISA and IPEA, and the PCT application contains claims that are determined to be patentable/allowable by the EPO as ISA or IPEA, the applicant may request accelerated examination at the JPO and the USPTO when the application has entered the national phase before these offices. The procedures and requirements for filing a request with the JPO and the USPTO for participation in the PCT-PPH pilot programme are available from the JPO website at www.jpo.go.jp and from the USPTO website at www.uspto.gov.

Where either the JPO or the USPTO was the ISA, or ISA and IPEA, and the PCT application contains claims that are determined to be patentable/allowable by that ISA or IPEA, the applicant may request participation in the PCT-PPH pilot programme at the EPO when the application has entered the European phase. The procedures and requirements for filing a request with the EPO for participation in the PCT-PPH pilot programme are set forth below.

With regard to PPH requests made on the basis of national work products, reference is made to the EPO-JPO and the EPO-USPTO bilateral PPH programmes.

A. Trial period for the PCT-PPH pilot programme

The PCT-PPH pilot programme will commence on 29 January 2010, for a period of two years ending on 28 January 2012. The trial period may be extended if necessary to adequately assess the feasibility of the PCT-PPH programme. The Trilateral Offices will evaluate the results of the pilot programme to determine whether and how the programme should be fully implemented after the trial period. The offices may also terminate the PCT-PPH pilot programme early if the volume of participation exceeds a manageable level, or for any other reason. Notice will be published if the PCT-PPH pilot programme is terminated before 28 January 2012.

B. Requirements for requesting participation in the PCT-PPH pilot programme in the EPO

In order to be eligible to participate in the PCT-PPH pilot programme, the following conditions must be met:

(1) Either the JPO or the USPTO has been ISA. Where a demand for PCT Chapter II has been filed, one of these offices has been IPEA as well. The PCT application may have been filed with any receiving Office and may claim priority from an earlier application filed with any member of the Paris Convention or the WTO. The different filing scenarios that are covered by the pilot are illustrated in the Annex.

(2) The PCT application has at least one claim determined by the ISA or, where a demand under Chapter II has been filed by the IPEA to be patentable/allowable in the sense that it is novel, inventive and industrially applicable. In case any observation is made in Box VIII of the WO-ISA or IPER, as the case may be, the applicant must explain why the claim(s) is/are patentable/allowable, and may file amendments to overcome these observations. The applicant must submit a copy of the claims deemed patentable/allowable as filed or as amended under Article 34(2)(b) PCT and a translation thereof in one of the EPO official languages, unless either of these is already available to the EPO.

(3) All the claims in the application on file upon entry into the European phase or as amended within the Rule 161 EPC time limit must sufficiently correspond to the claims deemed patentable/allowable by the ISA or the IPEA. Claims will be considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claims are of the same or a similar scope or the claims in the EP application are narrower in scope than the claims in the PCT application(s). Additionally, a claim in the EP application which introduces a new/different category of claims than those indicated to be patentable/allowable by the ISA or, where a demand under Chapter II has been filed, by the IPEA is not considered to sufficiently correspond. The applicant is also required to submit a claims correspondence table. The claims correspondence table must indicate how all the claims on file upon entry into the European phase or as amended within the Rule 161 EPC time limit correspond to the claims deemed patentable/allowable by the ISA or the IPEA.

(4) The application has entered the European phase on or after 29 January 20101, but substantive examination has not yet begun.

(5) The applicant must file a request for participation in the PPH pilot programme. A request form (EPA/EPO/OEB 1009 PCT) is available from the EPO website at http://www.epo.org.

(6) The applicant must submit a copy of the WO-ISA or, where a demand under PCT Chapter II has been filed, of the IPER and a translation thereof in one of the EPO official languages, unless either of these are already available to the EPO.

(7) The applicant must submit copies of all documents other than patent documents cited in the WO-ISA or IPER, unless these documents are already available to the EPO. If the EPO is not able to retrieve a patent document it will request the applicant to submit a copy of it. The EPO may also request the applicant to submit a translation of a patent document in one of the EPO official languages.

Where the request for participation in the PCT-PPH pilot programme is granted, the applicant will be notified and the EP application will be advanced out of turn for supplementary European search and substantive examination. In those instances where the request for participation in the PCT-PPH pilot programme does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to correct any deficiencies in the request. Action on the application by the examiner will not be suspended pending a reply by the applicant to correct the request in a renewed request for participation. If the request is not corrected, the applicant will be notified and the application will await action in its regular turn.

C. Prosecution under PACE

Once the request for participation in the PCT-PPH pilot programme has been granted, the EP application will be processed in an accelerated manner under PACE2.

Any inquiries concerning this notice may be directed to Eugen Stohr, Director, International Legal Affairs at international_legal_affairs@epo.org.

Annex

The embedded tables and forms within this article are for technical reasons only available in the PDF version of this article.