The European Patent Office (EPO) has announced as of July 2019 that the Patent Prosecution Highway (PPH) pilot programme with IP Australia is to be extended to June 2022.
In total, this means that the EPO has PPH programmes in effect with fifteen other patent offices. The relevant jurisdictions are: United States of America; China; Japan; Korea; Australia; Brazil; Canada; Colombia; Israel; Malaysia; Mexico; the Philippines; Russia; Singapore; and Eurasia.
What exactly is the PPH programme, and is it worthwhile?
Earlier Work Products
The PPH programme allows a later office to rely on ‘available work products’ from one of the partner offices, which indicates that the claims of the application are allowable.
This allows the EPO to fast-track the grant process of the European patent application, based on the earlier work product.
Requirements
There are specific requirements for participation in the PPH programme.
- The priority date or filing date of the earlier application must match that of European application to undergo PPH acceleration.
- The earlier application must have at least one claim therein indicated as allowable.
- The claims of the European application must be made consistent with the allowable claim(s) of the earlier application. A claims correspondence table should be provided as part of the request for PPH at the EPO.
- PPH must be requested before the EPO begins examination of the European application.
Effectively, the PPH programme allows the prosecution of a pending European application to catch up with that of an application in another jurisdiction, provided that the EPO has not already started examination on its merits.
Should I Use PPH Acceleration?
The EPO acknowledges that a valid PPH request will put the application into a fast-track stream, on a par with a standard request for acceleration under the PACE programme.
This is interesting, since there is a significantly lower administrative burden on the applicant for filing a PACE request than there is for filing a PPH request, with no apparent change to the potential timeframe to grant.
What is also worth noting is that the EPO Examiner is still required to assess the merits of the compliance of the European application with the requirements of the European Patent Convention. PPH acceleration does not guarantee grant – it is not a rubber-stamping exercise. The EPO has different requirements for grant when compared with, for example, the USPTO or KIPO. The EPO requirements with regards to added-matter are commonly regarded as being stricter than in some other jurisdictions
PACE vs. PPH
Therefore, there may be different factors to consider when deciding whether to request PACE acceleration or PPH acceleration.
- I want to bring my European application into alignment with an already-granted patent in another jurisdiction.
- In this scenario, it would seem prudent to allow the EPO to access the prior work product of the earlier office, in order to streamline grant. Provided there is no obvious reason that the application contravenes the EPC, then PPH acceleration would seem appropriate.
- I have a patent in another jurisdiction, and want to align some, but not all, of the features of the European application with the granted patent.
- In this situation, we would not want to just accept the allowed claims from the earlier office. As such, PACE acceleration would seem more applicable.
- I have a granted patent in another jurisdiction, but I have already responded to one examination report in Europe.
- A PPH request would be invalid here. PACE acceleration of the examination process could still, however, accelerate the route to grant. The timeframe between examination reports can be substantial under European procedure.
- I have a granted patent in another jurisdiction, but I am not sure whether the claims would be valid in Europe.
- The best thing to do here would be to assess the claims for compliance with the EPC first, potentially aligning the ‘spirit’ of the claims with those as granted overseas, and then just requesting PACE acceleration. This may shorten the examination procedure, given that any deficiencies in the claim set may be addressed first. This may not be possible in a PPH request.
Overall, there are scenarios in which a PPH request may be a useful tool to quickly obtain grant of a European patent. However, the more straightforward PACE scheme provides the same benefits of acceleration, without many of the restrictions associated with a PPH request.
The important thing is to remember that the application must still meet the requirements of the EPC for a valid patent to be issued, in particular, with regards to inventiveness and added subject-matter.
Author
