Pages 60-74

INFORMATION FROM THE EPO

Patent Prosecution Highway pilot programme between the European Patent Office and the United States Patent and Trademark Office based on national work products

I. Background

The Patent Prosecution Highway pilot programme (PPH) between the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) based on national work products was launched on 29 September 2008 and has been extended twice since its launch.

The EPO and the USPTO have agreed to revise the participation requirements and extend the trial period for the Patent Prosecution Highway Programme until 28 January 2014, with effect from 29 January 2012.

The Patent Prosecution Highway leverages fast-track patent examination procedures already available at both offices to allow applicants to obtain corresponding patents faster and more efficiently. It also permits each office to exploit the work previously done by the other office.

The present notice replaces that published in the OJ EPO 2010, 518 f.

II. Patent Prosecution Highway pilot programme using USPTO national work products

The PPH enables an applicant whose claims have been determined to be patentable/allowable to have a corresponding application filed with a PPH partner office processed in an accelerated manner while at the same time allowing the offices involved to exploit available work results.

Where 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. The procedures and requirements for filing a request with the USPTO for participation in the PPH pilot programme before the USPTO are available from the USPTO website at www.uspto.gov.

Where the US application contains claims that are determined to be patentable/allowable, the applicant may request participation in the PPH pilot programme at the EPO for the corresponding application filed with the EPO.

With effect from 29 January 2012, the procedures and requirements for filing a request with the EPO for participation in the PPH pilot programme on the basis of national work products established during the processing of a national application before the USPTO or a PCT application that has entered the national phase before the USPTO are set forth below (B) and apply to PPH requests made on or after 29 January 2012.

With regard to the utilisation of PCT international phase work products (WO/ISA, WO/IPEA and IPER) established by the USPTO in its capacity as ISA and/or IPEA, reference is made to the Trilateral PCT PPH pilot programme1.

A. Trial period for the PPH pilot programme

The PPH pilot programme with the revised requirements will commence on 29 January 2012, for a period of two years ending on 28 January 2014. The revised requirements will apply to PPH requests filed with the EPO on or after 29 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 2014.

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

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

(1) The EP application for which participation in the PPH pilot programme is requested and the corresponding US application must have the same priority/filing date. In particular the EP application, including a Euro-PCT application:

(Case I) is an application that validly claims the priority of one or more applications filed with the USPTO (see Annex, tables A, B, C and D);

or

(Case II) is an application which is the basis of a valid priority claim for the application filed with the USPTO (see Annex, tables E, F and G);

or

(Case III) is an application which shares a common priority document with the application filed with the USPTO (see Annex, tables H, I, J, K and L);

or

(Case IV) and the US application are derived from a PCT international application having no priority claim (see Annex, table M).

(2) The corresponding US application(s) has/have at least one claim indicated by the USPTO to be patentable/allowable.

(3) 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 corresponding US application(s). Claims are 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 US application(s). In this regard, a claim that is narrower in scope occurs when a USPTO claim is amended to be further limited by an additional feature that is supported in the specification (description and/or claims). 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. For example, where the USPTO claims only contain claims to a process of manufacturing a product, then the claims in the EP application are not considered to sufficiently correspond if the EP claims introduce product claims that are dependent on the corresponding process claims. The applicant is required to submit a declaration that the claim(s) sufficiently correspond between the EP and US applications.

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

C. Documents required for participation in the PPH pilot programme at the EPO

For participation in the PPH pilot programme at the EPO the applicant has to:

(1) 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 www.epo.org;

(2) file a declaration of claims correspondence (tick the appropriate box in the PPH request form);

(3) submit a copy of all the office actions for the corresponding US application(s) containing the patentable/allowable claims that are the basis for the PPH request;

(4) submit a copy of the patentable/allowable claim(s) from the US application(s);

(5) submit copies of all the documents other than patent documents cited in the USPTO office action(s).

Where the request for participation in the PPH pilot programme is granted, the applicant will be notified and the EP application will be processed in an accelerated manner. 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. If the request is not corrected, the applicant will be notified.

If any of the documents identified in points (3) and (4) 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 PPH request. 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 US application(s) is (are) unpublished, the applicant must submit the documents identified in points (3) and (4) above upon filing the PPH request.

The EPO may request certified copies of the documents identified in points (3) and (4).

D. 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 PACE2.

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

Annex

For technical reasons only the PDF version of this annex is available.