The Patent Prosecution Highway pilot programme between the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) was launched on 29 Septem- ber 2008 and extended for an additional twelve months from 30 September 2009.
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 EPO OJ 2008, 544 - 547.
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 corres- ponding 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/allow- able, the applicant may request partici- pation 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 Septem- ber 2009 was extended for an additional twelve months to adequately assess the feasibility of the PPH programme. The EPO and the USPTO will evaluate the results of the pilot programme to deter- mine 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 30 September 2010.
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
(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 appli- cation(s). Claims will be considered to sufficiently correspond where, account- ing 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 cate- gory 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 exam- iner will not be suspended pending a reply by the applicant to correct the request in a renewed request for partici- pation. 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 partici- pation 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 participa- tion 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 PACE 1.
Any inquiries concerning this notice may be directed to Eugen Stohr, Director, International Legal Affairs at email@example.com.
1 Notice from the EPO dated 14 July 2007 concerning the programme for the accelerated prosecution of European patent applications "PACE", Special edition No. 3, OJ EPO 2007, 102.
Notes on par ticipation in the Patent Prosecution Highway (PPH) pilot programme between the USPTO and the EPO
(EPA /EPO/OEB Form 1009 US)
These notes explain how to complete EPA /EPO/OEB Form 1009 US (Par tic ipation in the Patent Pro secution Highway pilot programme between the USPTO and the EPO). The form can be obtained from the EPO.
Filling in Form 1009 US
The sections of the form should be completed as follows:
USPTO/PCT application number: Enter the patent application number assigned by the USPTO.
Filing date of USPTO/PCT application: Enter the ling date accorded by the USPTO.
Corresponding EP application number: Enter the number of the corresponding European patent application which should be processed under PPH.
1. A copy of USPTO of ce action(s)
2. Request to obtain documents in 1. via the Dossier Access System: Applicant can either provide a copy of the USPTO of ce action(s) with the PPH request or request that the EPO obtain these documents from the USPTO, provided these documents are available via PAIR .
3. A copy of all c laims determined to be patentable/allowable by the USPTO
4. Request to obtain documents in 3. via the Dossier Access System: Applicant can either provide a copy of all c laims determined to be patentable/allowable by the USPTO with the PPH request or request that the EPO obtain these documents from the USPTO, provided these documents are available via PAIR .
5. Translations of the documents in 1. and 3. above in one of the EPO of c ial languages
6. Copies of all documents c ited in the USPTO of ce action(s) (except for patent documents)
7. Claims correspondence table: A completed c laims correspondence table indi cating how the c laims of the European patent application which is requested to be processed under PPH correspond to the c laims determined to be patentable/allowable in the corresponding USPTO application. The c laims correspond suf c iently when they are of the same or similar scope or the c laims in the EP application are narrower in scope than the c laims in the USPTO application(s). A c laim is narrower in scope when the USPTO c laim is amended to be fur ther limited by an additional feature that is suppor ted in the spec i cation (descr iption and /or c laims) of the EP application.
A c laim in the EP application which introduces a new /dif ferent categor y of c laims to those c laims indicated to be patentable/allowable by the USPTO is not considered to suf c ient ly correspond. For example, if the USPTO application only contains c laims to a process of manufactur ing a product, the c laims in the EP application are not considered to suf c ient ly correspond if the EP application introduces product c laims that are dependent on the corresponding process c laims.
When the c laims are identical or just literally translated, the applicant can indicate that " they are the same" in the table.
Applicants are requested to use one eld for each c laim.
Place: Enter the place of ling of Form 1009 US.
Date: Enter the date of ling of Form 1009 US.
Name: Enter the name of the person entitled to sign.
Signature: If the applicant is a legal person other than an individual, the form must be signed either by a person entitled to sign under the law or the applicant 's statute, ar tic les of assoc iation or the like, with an indication of the capac ity of the person doing so (e.g. chairman, director, company secretar y) (Ar t. 133(1) EPC), in which case no author isation need be led or by another employee of the applicant, provided the lat ter 's pr inc ipal place of business is in a contracting state (Ar t. 133(3), rst sen- tence, Rule 152(1) EPC), in which case an author isation must be led.
Date retrieved: May 20, 2014