As of August 2017, the Intellectual Property Corporation of Malaysia is the latest Office to reach an agreement with the European Patent Office (EPO) on the Patent Prosecution Highway (PPH) program, joining other Offices that have already reached a similar agreement with the EPO. Other Offices include the United States Patent and Trademark Office (USPTO), the Israel Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, the State Intellectual Property Office of the People’s Republic of China, the Intellectual Property Office of Australia, the Russian Patent Office , the Intellectual Property Office of Singapore, and others.

The PPH allows applicants whose claims have been held to be allowable/patentable by one of such other Offices, be it in its capacity as a national Patent Office or as a PCT Office, to have a corresponding European patent (EP) application processed by the EPO:
(a) by exploiting the already available work results of such other Offices, and
(b) in an accelerated manner.

The requirements that a EP application must meet in order to be eligible for the PPH program are:

1. EP application stage: the EP application must not have entered the substantive examination stage. This is not the time when the examination fee is paid, but rather the time when the EPO Examiner officially picks up the case in order to start examining it. Thus, many EP applications are eligible for PPH even several months after the examination fee has been paid.

2. Earliest date: the EP application and the foreign patent/application based on which PPH is requested must have the same earliest date (i.e. filing/priority date).

3. Claim correspondence: each of the EP application claims must “sufficiently correspond” to at least one of the claims that have been held allowable/patentable by the other Office.
The EPO considers claims to “sufficiently correspond” where – taking due consideration of any differences in wording resulting from different claim format requirements at the EPO and at the other Office – the EP application claims are of the same/similar scope of the claims allowed by the other Office, or the EP application claims are narrower in scope than the claims allowed by the other Office.
By contrast, a claim in the EP application belonging to a different claim category from those indicated to be patentable/allowable by the other Office is not considered to “sufficiently correspond” by the EPO. For example, where the claim set allowed by the other Office only contains process claims, then the EP application is not eligible for PPH if its claims also contain product claims (regardless of whether the product is the result of the claimed process).
In procedural terms, if, when the other Office identifies an allowable/patentable claim set, the EP application contains claims which do not “sufficiently correspond” to those of such claim set, the applicant can file an amended set of claims with the EPO to ensure that the sufficient correspondence requirement is met, thereby rendering the EP application eligible for the PPH program. Any EP application claims that do not correspond to those allowed by the other Office can then be easily pursued in a European divisional application.

It is therefore clear that the PPH program helps the EPO become even more efficient and speedy in its handling of EP applications, thereby potentially reducing costs for applicants. In addition, its use increases the chances that the same applicant will enjoy homogeneous patent protection in several states/regions throughout the world, thereby assisting in creating legal certainty and easing the applicant’s strategic business decisions.

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