EUROPEAN PATENT OFFICE
Information from the EPO
Patent Prosecution Highway pilot programme between the European Patent Office and IP Australia based on PCT and national work products
The European Patent Office (EPO) and IP Australia (IPA) announced on 7 October 2015 their intention to launch a comprehensive Patent Prosecution Highway pilot programme.
The Patent Prosecution Highway (PPH) 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.
II. 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 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 participating 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 participating 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 IPA. The procedures and requirements for filing a request with IPA are available via www.ipaustralia.gov.au/patents/applying-patent/standard-patent-application-process/ipa-epo-pph.
For the purposes of this notice
Office of Earlier Examination (OEE) refers to IPA, also in its capacity as ISA and/or IPEA, the work product of which is used as a basis for the PPH request,
while the Office of Later Examination (OLE) refers to the EPO as the office before which participation in the PPH pilot programme is being requested.
A. Trial period for the PPH pilot programme between the EPO and IPA
The PPH pilot programme between the EPO and IPA will commence on 1 July 2016, for a period of three years ending on 30 June 2019. The requirements laid forth below will apply to PPH requests filed with the EPO on or after 1 July 2016.
The EPO and IPA 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 PPH programme. The EPO may also terminate the PPH pilot programme early if the volume of participation exceeds a manageable level, or for any other reason. Notice will be published if the PPH pilot programme between the EPO and IPA is terminated before 30 June 2019.
B. Requirements for requesting participation in the PPH pilot programme between the EPO and IPA
In order to be eligible to participate in the 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 IPA (see Annex 1) or a corresponding PCT application for which IPA has been ISA and/or IPEA1 (see Annex 2).
(2) The corresponding application(s) must have at least one claim indicated by IPA in its capacity as a national office or ISA and/or IPEA to be patentable/allowable. 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 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 (Participation in the Patent Prosecution Highway (PPH) pilot programme)
is available via the EPO website at www.epo.org;
(2) file a declaration of claims correspondence which is included in the request form EPA/EPO/OEB 1009;
(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 and a translation thereof in one of the EPO official languages,
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 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 in 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 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 DAS (Dossier Access System)2or 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 programme3 apply by analogy to the prosecution of EP applications processed under the PPH pilot programme between the EPO and IPA.
Any inquiries concerning this notice may be directed to Panagiotis Rigopoulos, lawyer, European and International Legal Affairs, PCT at
1 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 IPA: AusPat, IP Australia's search database.