INFORMATION FROM THE EPO
Patent Prosecution Highway pilot programme between the Trilateral Offices based on PCT work products
I. Background
The Patent Prosecution Highway pilot programme between the Trilateral Offices based on PCT work products (Trilateral PCT-PPH) was launched on 29 January 2010.
The Trilateral Offices have agreed to revise the participation requirements and extend the trial period for the Trilateral PCT-PPH pilot programme until 28 January 2014, with effect from 29 January 2012.
The Patent Prosecution Highway leverages fast-track patent examination procedures already available at the Trilateral Offices to allow applicants to obtain corresponding patents faster and more efficiently. It also permits each office to exploit the work previously done by another office.
The present notice replaces that published in the OJ EPO 2010, 69 f.
II. PCT-PPH pilot programme
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.
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. With effect from 29 January 2012, the procedures and requirements for filing a request with the EPO for participation in the PCT-PPH pilot programme are set forth below (B) and apply to PPH requests made on or after 29 January 2012.
With regard to the utilisation of national work products established during the processing of a national application before the JPO or USPTO, reference is made to the EPO-JPO1 and EPO-USPTO2 bilateral PPH pilot programmes.
A. Trial period for the PCT-PPH pilot programme
The PCT-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 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 trial period may be extended if necessary to adequately assess the feasibility of the PCT-PPH programme. 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 2014.
B. Requirements for requesting participation in the PCT-PPH pilot programme at the EPO
In order to be eligible to participate in the PCT-PPH pilot programme at the EPO, the following conditions must be met:
(1) Either the JPO or the USPTO has been ISA3. 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. If 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.
(3) 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 determined to be patentable/allowable in the latest international work product. In this regard, a claim that is narrower in scope occurs when a claim determined to be patentable/allowable in the latest international work product 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 patentable/allowable by the ISA or, where a demand under Chapter II has been filed, by the IPEA is not considered to sufficiently correspond. For example, where the claims determined to be patentable/allowable in the latest international work product 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 claims on file upon entry into the European phase or as amended within the Rule 161 EPC time limit and the claim(s) determined to be patentable/allowable in the latest international work product sufficiently correspond.
(4) Examination of the EP application for which participation in the PCT-PPH pilot programme is requested has not begun.
C. Documents required for participation in the PCT-PPH pilot programme at the EPO
For participation in the PCT-PPH pilot programme at the EPO the applicant has to:
(1) file a request for participation in the PCT-PPH pilot programme. A request form (EPA/EPO/OEB 1009 PCT) is available from 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 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;
(4) 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;
(5) 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 processed in an accelerated manner. 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. If the request is not corrected, the applicant will be notified.
D. 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 PACE4.
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.
1 See OJ EPO, 2012, 75 f.
2 See OJ EPO, 2012, 60 f.
3 Applications for which the EPO was ISA and/or IPEA are not eligible for processing via the PPH before the EPO as DO/EO. The EPO understanding of the PPH is that an application is processed in an accelerated manner on the basis of a patentability assessment made by another office. Where the EPO has been ISA and/or IPEA, the PCT WO/ISA or IPER have effectively the same status as a first communication in substantive examination before the EPO as DO/EO. Thus, in this case there is no work product that can be considered as work done by "another" office. This case can, however, fall under the regular programme for accelerated processing of European patent applications ("PACE") which the applicant can request.
4 Notice from the EPO dated 4 May 2010 concerning the programme for the accelerated prosecution of European patent applications - "PACE", OJ EPO 2010, 352.