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).
Reinforced Partnership (RP) is a co-operation programme launched by the EPO in 2018. Under the programme, the EPO and the respective partner offices engage in a deep and wide-ranging partnership comprising co-operation activities across all areas of the patent system. One of the key objectives is to improve conditions for applicants, both foreign and local, and thereby to facilitate access to the national/regional patent systems.
As part of the RP programme, the partner offices agree to systematically reuse EPO work products in their patent grant processes with a view to enhancing and expediting the search and examination of national/regional patent applications claiming the same priority. Although RP does not require any legislative amendments to the legal frameworks of the partner countries, the closer the alignment of the national/regional patent laws with the European Patent Convention, the greater the benefits of reusing EPO work products.
To date, our partner offices are:
Applicants filing a patent application previously filed at the EPO with similar claims for prosecution at a partner office will benefit from increased predictability, timeliness and ultimately legal certainty as related EPO work results will be effectively and systematically reused in the partner office's patent grant process.
There is no special or additional fee to be paid for participating in reinforced partnership. Applicants simply have to pay the fees normally due at the partner office for the search and examination of patent applications.
Partner offices reuse EPO work products in a standardised and streamlined manner. The reuse workflow is embedded in the established patent grant process and customised to the specific legal, procedural and operational requirements of each partner office.
The main difference between RP, PPH and validation relates to their application, who decides to apply them and the effect of their application in the partner countries.
The RP programme is an ”office-driven” scheme for the standardised reuse of EPO search and examination results with a view to enabling partner offices to enhance and expedite the processing of subsequent national/regional applications with the same priority date. While the partner offices commit to systematically reuse EPO work results in their patent grant processes in a timely manner and to the maximum extent practicable, they will however perform the substantive examination of the related patent applications in line with their own national/regional legal frameworks. The final decision on the grant remains with the national office.
In contrast, the Patent Prosecution Highway (PPH) is applicant-driven and allows an applicant to request accelerated patent prosecution at a participating patent office where a corresponding application has already been found to contain patentable/allowable claims at a PPH partner office. The programme allows partner offices to reuse work already available and, hence, process applications in an accelerated manner. Under PPH, the application is processed out of turn and the examiner is explicitly asked to take into consideration available work results. PPH-based utilisation at the EPO and most PPH offices follows the "discretionary approach", which means that examiners will themselves define the extent of reliance on the prior work results on a case-by-case basis.
Finally, the validation system provides applicants with a simple and cost‑effective procedure for obtaining protection for a European patent in a validation state. If an applicant submits a request for validation and pays the validation fee in due time, European patent applications (direct and Euro‑PCT filings) and patents can be validated in these countries, where they will in principle have the same effect as national applications and patents, will be subject to national law and will enjoy essentially the same protection as patents that the EPO grants for EPC contracting states. While the validation systems is based on the relevant national law, and hence subject to the national validation rules of the country concerned, the patent office in the validation state will not conduct any further formal or substantive examination but accept and reuse the result of the examination at the EPO.
The RP programme is an office-driven scheme applied systematically by partner offices to national/regional patent applications with a corresponding EP family member. Applicants therefore do not have to apply to participate in the programme and/or to submit additional forms and documents (one of the key advantages of reinforced partnership). It is important to note, however, that the respective national/regional patent filing and prosecution requirements are not affected by reinforced partnership and remain as they are. The final decision on the grant remains with the national office.
Partner offices systematically consult the related EPO applications and reuse corresponding EPO work products to the maximum extent practicable under their applicable national/regional legal frameworks. The reuse procedure is integrated in the patent grant processes of the partner offices and customised to take into account specific legal, procedural and operational differences and requirements. To ensure consistency in the implementation of RP among the participating offices, the EPO provides its partners with extensive technical support, tools and guidance on the reuse procedure.
No. When a patent application has been filed with a partner office, its examiners will automatically assess if reusable EPO work products are available and which ones are most relevant.
Partner offices reuse EPO work products to the maximum extent practicable under their applicable national/regional legal framework. Since the RP does not require the partner countries to align their legal framework with the European Patent Convention, current differences in the respective patent laws and examination practices will continue to exist and reuse may therefore not be applicable and/or practicable in certain areas of legal and/or procedural divergence. This means in practice that in some cases patent applications may be treated differently by certain partner offices and that the patent examination process may lead to different outcomes.
Furthermore, even in areas where there is no substantive or procedural divergence between the legal frameworks, partner offices may in some cases decide not to fully reuse available work products, for instance, because they have discovered additional prior art, wish to reuse other citations instead or simply have a different opinion on the application at hand.
Finally, in some cases the reuse of EPO work products by a particular partner office can be limited in scope and duration by the EPO and partner office agreeing to first undertake a pilot project on RP.
To ensure that EPO work products are available in time for reuse at a partner office, the EPO provides a number of ways to shorten search and examination procedures. Detailed information can be found in the Guidelines for Examination.
The RP programme, unlike the PPH procedure, is applied systematically for all patent applications. It is expected that the RP programme will improve prosecution at partner offices by reducing unnecessary duplication of work. However, due to the diversity of the patent systems, it is not possible to provide a general answer how long the grant procedure takes at the different partner offices.
Country-specific FAQs will soon be available.
The patentability criteria, including the regulatory frameworks and related examination guidelines, are fully aligned between ARIPO and the EPO. The same holds true for the respective field-specific practices.
Ethiopia is undertaking a comprehensive review and modernisation of its patent system. It is anticipated that the related legal reforms will lead to the country's accession to various international treaties, including the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty.
Although Ethiopia is not a member of the Paris Convention, current Ethiopian IP law (Proclamation No. 123/1995) defines a priority right and how to treat foreign patent applications on this basis (in line with the definition of the Paris Convention). In addition, the current legal framework provides for the reuse of foreign search and examination results, and the Patent Examination Guidelines of the Ethiopian Intellectual Property Authority allow examiners to make use of available EPO tools and databases when working with corresponding applications.
The Ethiopian patent system also has a unique feature, the so-called "patent of introduction". This is a patent granted for an invention that has already been patented outside Ethiopia. A patent of introduction can be granted within twenty years of the initial filing date or priority date of the patent application in question. The interested party must issue a declaration of full responsibility for the commercialisation of the patented invention in Ethiopia within three years of the date of patent grant in Ethiopia (extendable up to ten years with evidence of commercialisation in Ethiopia). The patents of introduction are designed to boost the import, adoption, utilisation and improvement of foreign technologies and to promote innovation.
The patentability criteria established by the European Patent Convention (EPC) and the Malaysia Patents Act 1983 (MY PA 1983) are very much aligned: there are no significant divergencies with regard to clarity, sufficiency of disclosure or unity of invention.
There is a divergency with regard to the criteria for non-prejudicial disclosures. The EPC, for the novelty test, only disregards a disclosure of the invention if it occurred within the six months preceding the filing of the European patent application and if it was due to, or in consequence of, (a) an evident abuse or (b) the display at an official international exhibition. By contrast, the MY PA 1983 disregards a disclosure of the invention if it occurred within the 12 months preceding the filing date and where (a) the inventor has made the invention known or (b) it occurred in consequence of an evident abuse.
Another divergency exists between the two systems in the field of pharma inventions. Under Section 14(4) My PA 1983, a known substance or composition already comprised in the prior art may be patented for use in a method for the treatment of the human or animal body by surgery or therapy, or diagnostic methods practised on the human or animal body, only if the known substance or composition was not previously disclosed for use in surgery, therapy or diagnosis (first medical use). Another use of the same substance or composition (second and subsequent medical use) may be patentable, provided that said use is novel and inventive. The claim(s) for the second and subsequent medical use must be drafted in "Swiss-type claim format". Likewise, at the EPO, a substance or composition that is already known to have been put to a first medical use may also be patentable for any second or further use, provided that said use is novel and inventive. The difference at the EPO is that second medical‑use claims are no longer allowed in Swiss-type claim format (now known as the "EPC 2000 claim format").
While this divergency in claim-drafting requirements obviously limits the re-use of EPO work products related to second medical-use patent applications, experience shows that such re-use is possible in the patent examination and grant process at MyIPO.
In the field of computer-implemented inventions (CII) the EPC does not regard computer programs to be inventions only to the extent to which a European patent application or patent relates to that subject-matter as such. Mexican patent law, however, does not consider computer programs, without the "as such" limitation, to be inventions. While this does not, in practice, lead to the examination of CII patent applications at the EPO and the IMPI having different outcomes, it might require an adaptation of the claims for an application filed at the IMPI if the corresponding application at the EPO explicitly refers to computer programs in the claims, which would not be allowed at the IMPI. This applies to applications that were filed in accordance with the Industrial Property Law, which is currently abrogated. However, for applications received as of 5 November 2020, the new Federal Law on the Protection of Industrial Property applies, which is consistent with the EPC when it comes to claiming CII.
Moreover, with respect to the novelty test, the EPC disregards a disclosure of the invention only if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of, (a) an evident abuse or (b) display at an official international exhibition. The IMPI, however, disregards a disclosure of the invention if it occurred within the 12 months prior to the filing date and where the inventor has made the invention known by any means of communication, by putting it into practice or by displaying it at a national or international exhibition. This means that, in certain cases, a document which is cited in an EP search report as being prior art may not be considered to be prior art by the IMPI if the document has been published in a period of more than six months and less than a year before the filing date of the application.
