See also

CNIPA-EPO Pilot on ISA files

As of 1 December 2020, nationals or residents of P.R. China will be able to select the EPO as their International Searching Authority (ISA) and as their International Preliminary Examining Authority (IPEA).

 

Patent Prosecution Highway (PPH) programme - Outline and FAQs

Outline

The Patent Prosecution Highway (PPH) is a programme providing the applicant with the opportunity to expedite patent prosecution.

In principle, the PPH allows an applicant to request accelerated patent prosecution at the EPO where a corresponding application has already been found to contain patentable/allowable claims at a PPH partner office. The programme allows partner offices to reutilise work already available and, hence, process applications in an accelerated manner.

Currently, the EPO maintains PPH programmes with all IP5 Offices, i.e. JPO (Japan), KIPO (Republic of Korea), CNIPA (P.R. of China) and the USPTO (United States). Further PPH partner offices are IPA (Australia), INPI (Brazil), CIPO (Canada), SIC (Colombia), Eurasian Patent Office (EAPO), ILPO (Israel), MyIPO (Malaysia), IMPI (Mexico), INDECOPI (Peru), IPOPHL (the Philippines), ROSPATENT (Russia) and IPOS (Singapore).

Participation in the PPH programme at the EPO is free of charge.

Participation PPH programme

General Introduction to PPH

What is the Patent Prosecution Highway (PPH) programme?

The Patent Prosecution Highway (PPH) is a programme which allows the applicant to expedite patent prosecution, if a corresponding application has already been filed at a PPH partner office and said application contains patentable/allowable claims.

Which patent offices maintain PPH programmes with the EPO?

Currently, the EPO participates in the IP5 Patent Prosecution Highway programme (Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), State Intellectual Property Office of the People's Republic of China (CNIPA), United States Patent and Trademark Office (USPTO)).

The EPO also has programmes in place with the Canadian Intellectual Property Office (CIPO), Eurasian Patent Office (EAPO), the Israel Patent Office (ILPO), the Mexican Institute of Industrial Property (IMPI), Superintendence of Industry and the National Institute for the Defense of Competition and Intellectual Property Protection of Peru (INDECOPI), National Institute of Industrial Property of Brazil (INPI), the IP Australia (IPA), the Intellectual Property Office of Singapore (IPOS), Intellectual Property Office of the Philippines (IPOPHL), Intellectual Property Corporation of Malaysia (MyIPO), Federal Service for Intellectual Property (ROSPATENT) and the Superintendence of Industry and Commerce of Colombia (SIC).

Is there a fee associated with the PPH at the EPO?

No, participation in the PPH programme at the EPO is free of charge. However, the regular procedural fees apply. Regarding fees potentially applicable to the PPH at other offices, please consult the webpages of these offices.

What is an Office of Earlier Examination (OEE)?

The Office of Earlier Examination (OEE) is the patent office with which you have already filed the corresponding application that has been found to contain patentable/allowable claims. The OEE may also include the PPH partner office in its capacity as ISA and/or IPEA.

What is an Office of Later Examination (OLE)?

The Office of Later Examination (OLE) is the patent office with which you have filed the application whose claims correspond with those found patentable/allowable by the OEE and with which you may file the request for participation in the PPH programme. The OLE will take into account the work that has already been done by the OEE – this allows for accelerated prosecution of the application.

What types of “work products” can I base my PPH request on?

There are two types of “work products” that can be used when requesting participation in the PPH programme. First, you can use the latest work product in the international phase of a PCT application, such as the written opinion of the International Searching Authority (WO-ISA), the written opinion of the International Preliminary Examining Authority (WO-IPEA), or the international preliminary examination report (IPER). Furthermore, you can use a national work product established during the processing of a national application.

In either case, the work product(s) must

  • determine one or more claims to be patentable/allowable,
  • said claims must correspond with the claims filed in the application at the EPO, and
  • have been established by one of the EPO’s PPH partner offices (see Q 2 “Which patent offices maintain PPH programmes with the EPO?”).

Is the Patent Prosecution Highway (PPH) a “pilot” programme at the EPO? What does this mean?

The EPO has gradually started implementing the PPH as a permanent procedure.

I have heard of the “Global PPH (GPPH)”. What is it? Is the EPO a participating office?

The GPPH is a multilateral framework between national and regional intellectual property offices which bundles bilateral PPH programmes.

No, the EPO is not a participating office of GPPH.

The EPO maintains PPH programmes with the offices listed in Q 2 “Which patent offices maintain PPH programmes with the EPO?”. All PPH programmes at the EPO mirror the conditions applicable to the GPPH.

Where can I find more, detailed information about the EPO PPH programmes?

For more, detailed information regarding the various PPH programmes please consult the agreements published in the Official Journal of the EPO:

You can also consult the EPO’s Euro-PCT Guide: PCT procedure at the EPO

Overview of the PPH procedure

How can I participate in the PPH programme at the EPO?

Participation in the PPH programme at the EPO is possible for eligible applications (see Q 11 “When is my patent application eligible for PPH?”) upon the applicant’s request. Applicants must request participation in the PPH programme using EPO Form 1009, which is available via the Forms section of the EPO website. More information on how to fill in EPO Form 1009 can be found in the Notes on participation in the Patent Prosecution Highway (PPH) Programme .

With your request for participation you are also required to furnish the necessary supporting documents (see Q 28ff “What are “supporting documents”?).

When is my patent application eligible for PPH / What are the participation requirements?

Your application is eligible for PPH if:

  1. the European application (EP) for which participation in the PPH programme is requested shares the same earliest date with the corresponding, OEE application;
  2. the corresponding, OEE application has been found to contain at least one patentable/allowable claim;
  3. all claims of the EP application filed with the EPO as OLE sufficiently correspond with the claims deemed patentable/allowable in the OEE application, and
  4. substantive examination of the EP has not begun.

What is the common “earliest date”?

The common earliest date can be either the priority or filing date of a corresponding national application filed with another PPH partner office or a corresponding PCT application for which one of the PPH partner offices has been ISA and/or IPEA.

Can I base a PPH request on more than one corresponding application?

Yes, provided that the remaining participation conditions are met, a PPH request can be based on more than one corresponding application.

Can I request participation in the PPH programme at the EPO on the basis of a PCT work product established by the EPO in its capacity as ISA and/or IPEA, once the application enters the regional/European phase before the EPO as Designated Office/Elected Office (DO/EO)?

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. Hence, these applications are not eligible for processing via the PPH.

When does the EPO consider claims to sufficiently correspond?

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 European application are narrower in scope than the claims in the corresponding OEE application(s).

Can I include claims which introduce a new/different category at the OLE?

No. The EP application to be processed via the PPH must not contain claims that introduce a new/different category of claims than those indicated patentable/allowable by the OEE.

I have to file a “declaration of claims correspondence” to participate in the PPH programme. How do I file this declaration?

The EPO requires the applicant to submit a “declaration of claims correspondence” stating that the claims sufficiently correspond. This is done by ticking the relevant box in section D. of EPO Form 1009. No separate document needs to be filed.

Should the claims that were found patentable/allowable by the OEE be redrafted, if their current form does not comply with the established requirements of the European Patent Convention (EPC)?

Yes, the claims shall be drafted in a manner which is compliant with the requirements of the European Patent Convention (EPC) and relevant case law.

When should I file my PPH request?

You can file your PPH request at any time before the substantive examination has begun.

One of the requirements is that substantive examination of the EP application for which participation in the PPH programme is requested has not begun. How can I find out whether examination has begun?

The act starting examination is defined in the OJ EPO Notice dated 29 January 2013, OJ EPO 2013, 153. In particular, attention is drawn to page 155 of the above-mentioned notice.

To find out whether the substantive examination has started in a specific file, 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. In MyFiles, the date will be visible on Form F2095.

In published files, you may view these entries in the 'All documents' section of the 'European Patent Register' (see screenshot below).

If an application is eligible for processing under the PPH programme at the EPO, is the application going to be granted without search and/or substantive examination?

The EPO will not bypass any stages of the usual granting procedure, that is, search and examination will still be performed. The EPO examiner will take into consideration the OEE available work results. However, the EPO examining division is not bound by the patentability assessment made by the OEE.

In the context of the PPH would the EPO grant applications claiming subject-matter that does not fulfil the European Patent Convention (EPC) patentability requirements even if these applications have been allowed by the OEE?

No. As a matter of principle, the legal framework governing the grant procedure at the EPO remains fully applicable to applications processed via the PPH. This means that these applications have to fulfil patentability requirements as defined in the European Patent Convention (EPC) and the relevant case law.

The written opinion from the International Searching Authority (WO-ISA) and/or the International Preliminary Report on Patentability (IPER) contain “certain observations on the international application” in Box VIII of the respective forms. Is this relevant for my PPH request?

Yes. If available, you need to provide the explanations regarding Box VIII observations, contained either in Form PCT/ISA/237 – Written Opinion or Form PCT PCT/IPEA/409 - International Preliminary Report on Patentability.

Can a divisional application benefit from the PPH programme?

Yes. An applicant can request participation in the PPH programme at the EPO for a divisional application provided the remaining participation conditions are met.

Can the “work product” established by an OEE with regard to a utility model/innovation patent application be used as the basis for a PPH request?

No. Due to the differences in patentability requirements and examination standards between utility models, innovation patents and regular/standard patents, the EPO requires a regular/standard patent application as the basis for the PPH request.

What happens if the applicant fails to meet the PPH participation requirements or if the PPH request contains one or more defects?

In those instances where the request for participation in the PPH programme does not meet all the requirements for participation (see Qs 10 and 11; “How can I participate in the PPH programme at the EPO?”; “When is my patent application eligible for PPH?”) the applicant will be notified and the defect(s) in the request will be identified.

The applicant will be given one opportunity to correct formal deficiencies identified in the request. The EPO will invite the applicant to correct the formal deficiency(-ies) within a time limit of 2 months.

If the request is not corrected, or not corrected within the prescribed time limit, the application will be taken out of the PPH programme and the applicant will be notified.

What constitutes a formal deficiency in a PPH request?

A formal deficiency may be a clerical error or an omission in the request form which is rectifiable. Substantive deficiencies such as lack of claims correspondence cannot be rectified.

Supporting documents

What are the “supporting documents”?

Supporting documents are the documents which an applicant must submit to the OLE together with the PPH request form (EPO Form 1009). These documents are:

  • a copy of all OEE work products (or the latest work product(s) in the international phase of a PCT application) and a translation thereof into an EPO official language, where required;
  • a copy of all claims determined to be patentable/allowable by the OEE and a translation thereof into an EPO official language, where required;
  • a copy of all non-patent documents cited in the OEE work products, where applicable. In practice, it suffices when applicants submit a list of all cited non-patent documents.

How can I provide the supporting documents to the EPO?

In principle, you must submit together with the PPH request paper copies of all documents listed in Q 28 ‘What are “supporting documents”?’.

If the application is published and the documents are available via the respective Dossier Access System (DAS) or Patentscope, you may request that the EPO retrieves these documents electronically. In this case, you must submit a list of the documents to be retrieved.

You also need to submit a list of all documents other than patent documents (i.e. non-patent documents) cited in the OEE work product(s).

I have previously filed certain PPH supporting documents with the EPO, do I need to resubmit them?

No. If documents have already been filed in the EP application prior to the PPH request, you do not need to resubmit them; you should simply refer to those documents in the PPH request (EPO Form 1009).

Which offices make documents available via Patentscope, thus allowing the EPO to retrieve published PPH supporting documentation electronically?

All international documentation is available via Patentscope. A select number of national and regional offices make national/regional documents available on Patentscope, the list of participating offices can be found on Patentscope’s website.

Do I need to submit translations of PPH supporting documents?

Yes, you need to submit translations, if these documents are not available in any of the EPO official languages, i.e. English, French and German.

Are machine translations of PPH supporting documents admissible when filing a PPH request at the EPO?

Yes, machine translations are admissible. The EPO, however, may request a man-made translation, if the machine translation is insufficient.

PPH and other acceleration programmes or ways to expedite the grant

What is the difference between the PPH programme and the PACE programme?

The main difference between the two schemes pertains to the utilisation of available work results. Under PACE the European application is “taken out of turn” for search and/or examination, while under PPH the application is processed out of turn and the examiner is explicitly asked to take into consideration available work results.

However, PPH-based utilisation at the EPO follows the so-called discretionary approach, which means that the EPO examiner will him-/herself define the extent of reliance on the OEE work results.

Is there a different degree of acceleration between PACE and PPH?

No. Under Early Certainty from Search (ECfS) files processed via PPH or PACE are both treated with the highest priority. In the context of the PPH, the degree of acceleration may vary depending on the individual circumstances of the particular case, such as the usability of the OEE work product, the point in time when PPH is requested.

Does a granted PPH request imply accelerated processing of (i) the Search, (ii) the Examination phase or (iii) both?

A granted PPH request will result in the application being processed in an accelerated manner both through search and examination, provided that the request has been filed early enough in the grant procedure.

Can I apply for an extension of time limits when the application is being processed via the PPH?

As a matter of principle, a request for an extension of time limits is per se not compatible with the rationale behind accelerated prosecution. Therefore, applicants are advised to refrain from requesting an extension of time limits for applications treated via PPH, as this contradicts, the main idea/element of the programme.

Will applicants requesting participation in the PPH programme for all or most of their applications be required to limit the number of PPH requests?

Both in the contexts of the PACE and PPH programmes applicants requesting accelerated prosecution systematically, i.e. for all or the majority of their applications, may be required by the EPO to limit the number of their PACE and/or PPH requests by making a selection. This is necessary in order to ensure efficient use of resources and effective workload management.

Does filing a request for PPH automatically trigger the various waivers available during the grant procedure at the EPO?

No. The applicant is advised to consider taking advantage of further ways to expedite the grant procedure (OJ EPO 2015, A94) also in the context of the PPH.

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