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 pat- entable/allowable to have a corres- ponding application filed with a PPH partner office processed in an acceler- ated 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 patent- able/allowable by the EPO as ISA or IPEA, the applicant may request acceler- ated examination at the JPO and the USPTO when the application has entered the national phase before these offices. The procedures and require- ments 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-JPO 1 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.

1 See OJ EPO, 2012, 75 f. 2 See OJ EPO, 2012, 60 f.

The Trilateral Offices 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 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 ISA 3. 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.

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 communi- cation 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.

(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 obser- vation is made in Box VIII of the WO-ISA or IPER, as the case may be, the appli- cant 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 patent- able/allowable in the latest international work product is amended to be further limited by an additional feature that is supported in the specification (descrip- tion and/or claims). Additionally, a claim in the EP application which introduces a new/different category of claims than those indicated to be patentable/allow- able 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 patent-

able/allowable in the latest interna- tional 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 participa- tion 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 corres- pondence (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 trans- lation 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 docu- ments 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 trans- lation 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 accel- erated 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 appli- cant 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 PACE 4.

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

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.

Annex

(A) The application is a national phase application of the corresponding international application.

WO / ISA IPER

ISA / XX IPEA / XX

XX = JPO, USPTO

(A') The application is a national phase application of the corres- ponding international application.

(The corresponding international application claims priority from a national application.)

WO / ISA IPER

ISA / XX IPEA / XX

XX = JPO, USPTO

(A'') The application is a national phase application of the corres- ponding international application.

(The corresponding international application claims priority from an international application.)

WO / ISA IPER

ISA / XX IPEA / XX

XX = JPO, USPTO

(B) The application is a national application on which the priority claim of the corresponding international application is based.

WO / ISA IPER

XX = JPO, USPTO

(C) The application is a national phase application of an international application claiming priority from the corresponding international application.

ISA /

(D) The application is a national application claiming foreign/domestic priority from the corresponding international application.

(E1) The application is a divisional application of an application which satisfies requirement (A).

(E2) The application is an application claiming domestic priority from an application which satisfies requirement (B).

WO / ISA IPER

ISA / XX IPEA / XX

XX = JPO, USPTO

Par ticipation in the Patent Prosecution Highway pilot programme (PCT-PPH) between the Trilateral Of(cid:191) ces based on PCT work products

(Form EPA /EPO/OEB 1009 PCT)

Introduction

These notes explain how to complete form EPA /EPO/OEB 1009 PCT (Par tic ipation in the PCT Patent Prosecution Highway pilot programme between the Tr ilateral O f (cid:191) ces based on PCT work products). The form can be obtained from the EPO.

Filling in form 1009 PCT

The sections of the form should be completed as follows:

PCT application number: Enter the number of the international PCT application. International (cid:191) ling date of the application: Enter the international (cid:191) ling date of the application. Corresponding EP application number (if known): Enter the number of the corresponding European patent application which should be processed under the PPH.

1. A copy of the WO - ISA or IPER

2. Request to obtain documents in 1 via Patentscope: Applicant can either provide a copy of the WO - ISA or IPER with the PPH request or request that the EPO obtain these documents via Patentscope.

3. A copy of all c laims determined to be patentable/allowable by the ISA or IPEA

4. Request to obtain documents in 3 via the Patentscope: Applicant can either provide a copy of all c laims determined to be patentable/allowable by the ISA /IPEA with the PPH request or request that the EPO obtain these documents via Patentscope.

5. Translations of the documents in 1 and 3 above in one of the EPO of (cid:191) c ial languages (unless already available to the EPO)

6. Copies of all documents c ited in the WO - ISA or IPER (except for patent documents)

7. Dec laration of c laims correspondence The applicant dec lares that the c laims on (cid:191) le upon entr y into the European phase or as amended within the Rule 161 EPC time limit and the c laim(s) determined to be patentable/ allowable suf (cid:191) c iently correspond.

Place: Enter the place of (cid:191) ling of form 1009 PCT.

Date: Enter the date of (cid:191) ling of form 1009 PCT.

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 (cid:191) 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), (cid:191) rst sentence, Rule 152(1) EPC), in which case an author isation must be (cid:191) led.

References: ar150; ar153;