OJ EPO 2014, A8 - Patent Prosecution Highway pilot programme between the IP5 Offices based on PCT and national work products

I. Background

The European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People's Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO), referred to as the IP5 Offices, announced on 24 September 2013 their intention to launch a comprehensive Patent Prosecution Highway pilot programme.

The Patent Prosecution Highway 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.

The present notice replaces those published in the OJ EPO 2012, 60 f., 75 f. and 89 f.

II. IP5 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 IP5 PPH 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 one of the IP5 Offices 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 one of the IP5 Offices,

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 one of the IP5 partner offices, i.e. JPO, KIPO, SIPO and the USPTO. The procedures and requirements for filing a request with these offices are available from their respective websites.

For the purposes of this notice

the IP5 Office, i.e. JPO, KIPO, SIPO, USPTO, also in its capacity as ISA and/or IPEA, the work product of which is used as a basis for the PPH request is referred to as Office of Earlier Examination (OEE),

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

A. Trial period for the IP5 PPH pilot programme

The IP5 PPH pilot programme will commence on 6 January 2014, for a period of three years ending on 5 January 2017. The requirements laid forth below will apply to PPH requests filed with the EPO on or after 6 January 2014.

The EPO 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 IP5 PPH programme. The EPO may also terminate the IP5 PPH pilot programme early if the volume of participation exceeds a manageable level, or for any other reason. Notice will be published if the IP5 PPH pilot programme is terminated before 5 January 2017.

B. Requirements for requesting participation in the IP5 PPH pilot programme

In order to be eligible to participate in the IP5 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 another IP5 Office (see Annex 1) or a corresponding PCT application for which one of the IP5 Offices has been ISA and/or IPEA[ 1 ] (see Annex 2).

(2) The corresponding application(s) has/have at least one claim indicated by one of the IP5 Offices in its capacity as a national or regional Office, ISA and/or IPEA to be patentable/allowable[ 2 ],[ 3 ]. The claim(s) determined as novel, inventive and industrially applicable by the ISA and/or IPEA has/have the meaning of patentable/allowable for the purposes of this notice.

(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 MyFiles service,

for published applications to all in the European Patent Register.

C. Documents required for participation in the IP5 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 PCT (Participation in the Patent Prosecution Highway (PPH) pilot programme between the IP5 Offices on the basis of PCT work products),

or EPA/EPO/OEB 1009 PR (Participation in the Patent Prosecution Highway (PPH) pilot programme between the IP5 Offices on the basis of national work products)

is available via the EPO website at www.epo.org;

(2) file a declaration of claims correspondence[ 4 ];

(3) submit a copy of either all the office actions for the OEE corresponding application(s) containing the patentable/allowable claims that are the basis for the PPH request, where applicable, and a translation thereof in one of the EPO official languages, or the latest work product in the international phase of a PCT application, the WO-ISA or, where a demand under PCT Chapter II has been filed, the WO-IPEA or the IPER, where applicable, 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) or the PCT work product identified in point (3) above.

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 pilot programme and 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 the resprective Dossier Access System (DAS) [ 5 ] or Patentscope, the applicant does not need to submit a copy thereof, but has to provide a list of the documents to be retrieved. Machine translations will be admissible for the documents identified in points (3) and (4). The EPO will request applicants to submit a translation of the documents identified in points (3) and (4) above, if DAS does not provide a machine translation. The EPO can request applicants to submit an accurate translation, if the machine translation is insufficient. If the OEE application(s) is (are) unpublished, the applicant must submit the documents identified in points (3) and (4) above upon filing the PPH request.

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 programme[ 6 ] shall apply by analogy to the prosecution of EP applications processed under the IP5 PPH pilot programme.

Any inquiries concerning this notice may be directed to Panagiotis Rigopoulos, Lawyer, International Legal Affairs, PCT at

international_legal_affairs@epo.org.

 

 

 

 

 

 

 

 

 

 

[ 1 ] Either the JPO, KIPO, SIPO or the USPTO has been ISA and/or IPEA. 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.

[ 2 ] For the JPO claims are indicated to be allowable/patentable when the JPO examiner clearly identified the claims to be allowable/patentable in the latest office action. The office action includes:

(a) Decision to Grant a Patent

(b) Notification of Reasons for Refusal

(c) Decision of Refusal

(d) Appeal Decision.

If the following standard expression is described in the "Notification of Reason for Refusal", those claims are clearly identified to be allowable/patentable:

"<Claims(s) which has (have) been found no reason for refusal>

At present for invention concerning Claim _, no reason for refusal is found."

[ 3 ] For SIPO claims are “determined to be allowable/patentable” when the SIPO examiner explicitly identified the claims to be allowable/patentable in the latest office action, even if the application is not granted for patent yet. The office action includes:

(a) Decision to Grant a Patent,

(b) First/Second/Third/… Office Action,

(c) Decision of Refusal,

(d) Reexamination Decision, and

(e) Invalidation Decision.

Claims are also “determined to be allowable/patentable” in the following circumstances: If the SIPO office action does not explicitly state that a particular claim is allowable/patentable, the applicant must include explanation accompanying the request for participation in the PPH pilot programme that no rejection has been made in the SIPO office action regarding that claim, and therefore, the claim is deemed to be allowable/patentable by the SIPO. For example, if claims are not shown in the item of “6. the Opinion on the Conclusion of Examination about Claims ” in the “First Notice of the Opinion on Examination” or “5. the Opinion on the Conclusion of Examination about Claims” in the “Second/Third/… Notice of the Opinion on Examination” of the SIPO, those claims may be deemed to be implicitly identified to be allowable/patentable and then the applicant must include the above explanation.

[ 4 ] In cases where the OEE action does not explicitly identify claims that are patentable/allowable, the applicant must also submit an explanation which individual claims are patentable/allowable and how these claims are delimited over the cited prior art.

[ 5 ] JPO: AIPN; KIPO: K-PION; SIPO: China Patent Enquiry System; USPTO: PAIR.

[ 6 ] Notice from the EPO dated 4 May 2010 concerning the programme for the accelerated prosecution of European patent applications – "PACE", OJ EPO 2010, 352.

Source: http://www.epo.org/law-practice/legal-texts/official-journal/2014/01/a8.html

Date retrieved: 19 May 2021

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