Pages 518-528

INFORMATION FROM THE EPO

Patent Prosecution Highway pilot programme between the European Patent Office and the United States Patent and Trademark Office

I. Background

The Patent Prosecution Highway pilot programme (PPH) between the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) was launched on 29 September 2008 and extended for an additional twelve months from 30 September 2009.

The European Patent Office and the United States Patent and Trademark Office agreed to extend the trial period for the Patent Prosecution Highway Programme until 28 January 2012, effective as of 1 October 2010.

The Patent Prosecution Highway will leverage fast-track patent examination procedures already available at both offices to allow applicants to obtain corresponding patents faster and more efficiently. It will also permit each office to exploit the work previously done by the other office. In turn the initiative is expected to improve patent quality and reduce the examination workload.

The present notice replaces that published in the OJ EPO 2010, 46 - 56.

II. Patent Prosecution Highway 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.

Where the EPO is the OFF and the EP application contains claims that are determined to be patentable/allowable, the applicant may request accelerated examination at the USPTO for the corresponding application filed with the USPTO as the OSF. The procedures and requirements for filing a request with the USPTO for participation in the PPH pilot programme are available from the USPTO website at www.uspto.gov. Where the USPTO is the OSF, the applicant must provide the USPTO with the necessary documents for requesting participation in the PPH pilot programme, or request that the USPTO obtain these documents via the EPO epoline^® system. In cases where the EP application has not been published, the applicant will be responsible for providing the necessary documents to the USPTO.

Where the EPO is the OSF and the corresponding application filed with the USPTO as the OFF contains claims that are determined to be patentable/allowable, the applicant may request participation in the PPH pilot programme at the EPO. Effective 29 January 2010, the procedures and requirements for filing a request with the EPO for participation in the PPH pilot programme are set forth below (II.B) and apply to PPH requests made on the basis of work products established during the processing of a national application before the OFF or a PCT application that has entered the national/regional phase before the OFF. With regard to the EPO-USPTO PPH pilot programme based on PCT work products (i.e. WO/ISA, WO/IPEA and IPER), reference is made to the Trilateral PCT PPH pilot programme.

A. Trial period for the PPH pilot programme

The PPH pilot programme commenced on 29 September 2008, for a period of one year, and with effect from 30 September 2009 was extended for an additional twelve months. With effect from 1 October 2010 and in order to adequately assess the feasibility of the PPH programme the EPO and the USPTO agreed to extend the pilot until 28 January 2012. The EPO and the USPTO 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 PPH pilot programme early if the volume of participation exceeds a manageable level, or for any other reason. Notice will be published if the PPH pilot programme is terminated before 28 January 2012.

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

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

(1) The EP application is

(a) a European direct/Paris Convention application validly claiming the priority of one or more applications filed with the USPTO

or

(b) a PCT application which has entered the regional phase before the EPO (Euro-PCT)

and was filed as of 29 September 2008 or has entered the regional phase respectively as of 29 January 2010. Examples of European applications that fall under this requirement are illustrated in the Annex.

Additionally, a divisional EP application of an earlier filed application in the OSF which validly claims the priority of one or more applications filed with the USPTO is considered to be eligible.

(2) The USPTO application(s) has/have at least one claim indicated by the USPTO to be patentable/allowable. The applicant must submit a copy of the patentable/allowable claims from the USPTO application(s).

(3) All the claims in the EP application for which a request for participation in the PPH pilot programme is made must sufficiently correspond or be amended to sufficiently correspond to the patentable/allowable claims in the USPTO application(s). 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 USPTO application(s). Additionally, a claim in the EP application which introduces a new/different category of claims than those indicated to be allowable/patentable by the USPTO is not considered to sufficiently correspond. The applicant is also required to submit a claims correspondence table in English. The claims correspondence table must indicate how all the claims in the EP application correspond to the patentable/allowable claims in the USPTO application(s).

(4) Examination of the EP application for which participation in the PPH pilot programme is requested has not begun.

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

(6) The applicant must submit a copy of all the office actions (which are relevant to patentability) for each of the USPTO application(s) containing the patentable/allowable claims that are the basis for the request.

(7) The applicant must submit copies of all the documents other than patent documents cited in the USPTO office action.

Where the request for participation in the PPH pilot programme is granted, the applicant will be notified and the EP application will be advanced out of turn for examination. In those instances where the request for participation in the 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.

If any of the documents identified in points (2) and (6) above

(a) have already been filed in the EP application prior to the request for participation in the PPH pilot programme, it will not be necessary for the applicant to resubmit these documents with the request for participation. The applicant may simply refer to these documents and indicate in the request for participation in the PPH pilot programme when these documents were previously filed in the EP application.

(b) are available via PAIR (Patent Application Information Retrieval), the applicant does not need to submit a copy thereof, but has to provide a list of the documents to be retrieved. If the USPTO application(s) is (are) unpublished, the applicant must submit the documents identified in points (2) and (6) above upon filing the PPH request.

The EPO may request certified copies of the documents identified in points (2) and (6).

C. Prosecution under PACE

Once the request for participation in the PPH pilot programme has been granted, the EP application will be processed in an accelerated manner under PACE1.

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

Annex

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

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