As we are now approaching the end of the 2nd year of life of the Patent Prosecution Highway (PPH) pilot programme between the EPO and the USPTO, there is a great expectation that this programme will be renewed for a 3rd year, in order to enable a hopefully high level of worksharing between the two Offices, thereby shortening the time to grant of the patents issued by these Offices.

From the EPO perspective, PPH entails that a European application claiming priority from one or more US applications can be prosecuted in an accelerated manner by the EPO, and the EPO can benefit from the work already done by the USPTO on the US priority application(s), if the following main conditions apply:
(a) the USPTO has indicated that at least one of the claims of the US priority application(s) is allowable,

(b) all the claims of the European application are substantially identical to the claims of the US priority application(s) that the USPTO considers to be allowable. The European claims may be narrower than those allowed by the USPTO, but they may not belong to a different claim category. In particular, the European application may not contain both some claims that are substantially identical to those allowed by the USPTO, and which might therefore be eligible for PPH, and some other claims which are different from those allowed by the USPTO, and which will therefore not be eligible for PPH. Either all pending claims of the European application are eligible for PPH, or PPH will not be applicable to the European application due to the content of the pending claims.

(c) European examination has not yet started.

When requesting PPH for a given European application, the applicant must in essence submit a copy of the US file history for each of the US priority application(s) containing the allowable claims that underlie the PPH request. In other words, the European Examiner does not autonomously look at the US file history of the US priority application(s) identified in the PPH request. Rather, it is up to the applicant to file with the EPO all those parts of the US file history that the applicant feels will be useful for the European Examiner to make his assessment. The availability of the US file history should cause the European Examiner to benefit from any arguments already made by the applicant before the US Examiner, which may avoid a repetition of such arguments and may lead to a faster grant of the European patent, if the Examiner agrees both with the objections raised by his US colleague and with how these were overcome by the applicant at the USPTO.

It is our understanding that not many European applications have been subjected to PPH. However, as the number of patent filings in the main Offices of the world may increase in the future, it will surely be helpful for these Offices to continue pursuing and improving worksharing initiatives such as PPH.

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