Article 107

EUROPEAN PATENT OFFICE

Information from the EPO

Patent Prosecution Highway pilot programme between the European Patent Office and the National Institute for the Defense of Competition and Intellectual Property Protection (Peru) based on PCT and national work products

I. Background

The European Patent Office (EPO) and the Superintendence of Industry and the National Institute for the Defense of Competition and Intellectual Property Protection (INDECOPI) announced on 18 October 2019 their intention to launch a comprehensive Patent Prosecution Highway pilot programme.

The Patent Prosecution Highway (PPH) leverages fast-track patent examination procedures already available at the 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.

II. The 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 pilot programme a PPH request can be based

either on the latest PCT work product (written opinion of the ISA (WO-ISA) or international preliminary examination report (IPER)) established by the EPO as ISA or IPEA,

or on the national work product established during the processing of a national application or a PCT application that has entered the national phase before the EPO or INDECOPI,

where this work product determines one or more claims to be patentable/allowable.

Where the EPO work product contains one or more claims that are determined to be patentable/allowable, the applicant may request participation in the PPH pilot programme at INDECOPI. The procedures and requirements for filing a request with INDECOPI are available via indecopi.gob.pe.

For the purposes of this notice

Office of Earlier Examination (OEE) refers to INDECOPI, the work product of which is used as a basis for the PPH request,

while the Office of Later Examination (OLE) refers to the EPO as the office before which participation in the PPH pilot programme is being requested.

A. Trial period for the PPH pilot programme between the EPO and INDECOPI

The PPH pilot programme between the EPO and INDECOPI will commence on 2 January 2020, for a period of three years ending on 1 January 2023. The requirements laid forth below will apply to PPH requests filed with the EPO on or after 2 January 2020.

The EPO and INDECOPI 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 PPH programme. The EPO 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 between the EPO and INDECOPI is terminated before 1 January 2023.

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

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 must have the same earliest date with the corresponding application, whether this be the priority or filing date of a corresponding national application filed with INDECOPI or a corresponding PCT application that has entered the national phase before INDECOPI (see Annex).

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

(3) All claims in the EP application for which a request for participation in the PPH pilot programme is made must sufficiently correspond to the patentable/allowable claims in the OEE corresponding 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 OEE corresponding application(s). In this regard, a claim that is narrower in scope occurs when an OEE 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 patentable/allowable by the OEE is not considered to sufficiently correspond. For example, where the OEE 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 declare that the claims between the EP and the OEE applications sufficiently correspond.

(4) Substantive examination of the EP application for which participation in the PPH pilot programme is requested has not begun. The examination starting date is visible

for unpublished applications only at the request of the applicant or his representative or by inspecting the file using the My Files service,

for published applications to all in the European Patent Register.

C. Documents required for participation in the PPH pilot programme

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. The request form

EPA/EPO/OEB 1009 (Participation in the Patent Prosecution Highway (PPH) pilot programme)

is available via the EPO website at epo.org;

(2) file a declaration of claims correspondence which is included in the request form EPA/EPO/OEB 1009;

(3) submit a copy of all the office actions for the OEE corresponding application(s) containing the patentable/allowable claims that are the basis for the PPH request and a translation thereof in one of the EPO official languages.

(4) submit a copy of the patentable/allowable claim(s) from the OEE application(s) and a translation thereof in one of the EPO official languages.

(5) submit copies of all the documents other than patent documents cited in the OEE office action(s) identified in point (3) above.

The applicant needs to submit paper copies of the documents identified in points (3) and (4) above unless these documents have already been filed in the EP application prior to the request for participation in the PPH pilot programme. In this case 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.

When the requirements set forth above are met, the request for participation in the PPH pilot programme will be granted 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 formal deficiencies identified in the request. If the request is not corrected, the application will be taken out of the PPH programme and the applicant will be notified.

D. Prosecution in an accelerated manner

Once the request for participation in the PPH pilot programme has been granted, the EP application will be processed in an accelerated manner. The conditions applicable to the PACE programme1 shall apply by analogy to the prosecution of EP applications processed under the PPH pilot programme between the EPO and INDECOPI.

Any inquiries concerning this notice may be addressed to the Directorate European and International Legal Affairs, PCT, at international_legal_affairs@epo.org.

Annex

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