OCTOBER 2013: PPH PILOT PROGRAMME AT THE EPO TO BE EXTENDED TO KOREA AND CHINA
What is a Patent Prosecution Highway?
Under the Patent Prosecution Highway (PPH) programme, Patent Offices share their work products based on the recognition of equivalent quality and offer the Applicants accelerated examination. This programme thus allows Patent Offices to improve their efficiency and backlog and Applicants to shorten the time before patent grant.
How does a PPH work?
Once an Applicant obtains a favourable decision on patentability for an application from one Patent Office, he may use the PPH to ask for accelerated processing of a corresponding application pending before a participating Patent Office.
The favourable decision on patentability may be a decision of grant, but also, depending on the Patent Office, a notice of allowance or a favourable International Preliminary Examination Report.
Some formal requirements apply, depending on each Patent Office. Generally, the PPH request must be filed before examination on the merits has started. Also, claims are generally required to sufficiently correspond to those found patentable, which may demand amendment. Further, the Applicant may have to provide Office Actions and Responses thereto along with cited documents, and, as the case may be, their translation. No fees are however generally due for participating in a PPH programme.
Where is a PPH available?
The PPH pilot programmes between Patent Offices are generally concluded as bilateral or trilateral agreements.
The European Patent Office (EPO) participates in two trilateral PPH programmes with the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO). Requests under the PPH may be filed both for national patent applications and for PCT applications.
On September 24, 2013, the EPO announced that the world’s five largest Intellectual Property Offices (IP5) have agreed to launch a joint PPH pilot programme as of January 2014. The resulting PPH programme available at EPO will thus further include the Korean Intellectual Property Office (KIPO) and the State Intellectual Property Office of the People’s Republic of China (SIPO).
What are the effects of PPH?
According to the available statistics, the acceleration may indeed be quite impressive. For instance, the average pendency from PPH request to first Office Action is less than 3 months at the JPO and less than 6 months at the USPTO .
The EPO did not provide any statistical data regarding PPH. However, it indicated that it would process applications under PPH as those under the PACE programme.
Indeed, acceleration is also available at the EPO under the programme PACE, eventually in combination with procedural options (see for details our IP Alert of February 2013). Acceleration under PACE may be requested any time, without charge and without conditions except for Applicant’s own diligence. Also, a PACE request is not published if made separately. But most importantly, and in contrast with PPH, PACE does not require any claim amendment. This is a distinct advantage of PACE. Indeed, amendments to EP applications have to satisfy strict criteria and may be challenged both during and after examination. If found inadmissible, amendments may cause the refusal of the application or the revocation or invalidity of the patent.
The attractive existing options such as PACE, along with scarcer PPH agreements, explain why PPH is less popular for European Applicants. Indeed, by June 2013, only 523 PPH requests were filed at the EPO as a designated Office, while 2752 requests were filed at the JPO and 7148 requests at the USPTO.
However, the PPH programmes remain very attractive for Offices which do not offer other options for acceleration of proceedings, or only in specific circumstances.
If you have any questions regarding this matter, feel welcome to contact Simone Kling.
Publication date : October 2013