Following recent negotiations, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office, the State Intellectual Property Office of the People’s Republic of China, and the US Patent and Trademark Office, known collectively as the IP5 Offices, have announced the launch of a new and comprehensive Patent Prosecution Highway (PPH) pilot program. This new program will start on 6 January 2014 and will last three years.

This is surely good news for all patent applicants filing with the IP5 Offices. In fact, the goal of the PPH program is to enable applicants to obtain corresponding patents in all IP5 Offices more quickly and efficiently, by allowing each IP5 Office to exploit the work already done by one of the other Offices.

Under the new PPH program, the exploitable work is the most recent PCT work, i.e. the written opinion or the international preliminary examination report completed by one of the IP5 Offices acting as ISA or IPEA. Alternatively, the national work completed during prosecution before one of the IP5 Offices can be exploited as well.
With respect to PPH requests filed at the EPO, certain requirements must be met by the EP application, namely:
a) the EP application must have the same earliest (priority or filing) date as the corresponding application;
b) the IP5 Office whose work is to be exploited must have held that at least one claim of the corresponding application is patentable/allowable;
c) all claims of the EP application must sufficiently correspond to the patentable/allowable claims of the corresponding application; and
d) examination of the EP application has not yet begun.

Two of the above requirements are worth looking at in more detail in order to appreciate the scope of the new program.

According to an EPO Notice of 18 December 2013, the finding of patentability/allowability by the IP5 Office whose work is to be exploited relates to any claims that are “determined as novel, inventive and industrially applicable by the ISA and/or IPEA”. This definition does not mention that the claims must also be found to be literally supported in the original application, which is quite well-known as one of the main requirements for the grant of a European patent. This definition therefore begs the question of the extent to which the EPO will be able to assess such literal support when assessing claims falling within such definition. On the other hand, the definition does not mention claims that were determined as novel, inventive and industrially applicable by one of the IP5 Offices when not acting as ISA or IPEA, although it is presumed that these claims too will fall under the definition of patentable/allowable claims.

According to the same EPO Notice, sufficient claim correspondence is present where, accounting for differences due to claim format requirements, the claims are of the same or a similar scope, or where the claims of the EP application have a narrower scope than those of the corresponding application. This requirement does not appear to have changed from the previous PPH programs at the EPO, but it is still important to keep it in mind when deciding whether to request PPH for an EP application.

The new IP5 PPH program appears to confirm the clear push by the IP5 Office top-level administrations to avoid duplication of work, shorten the time to grant, and achieve harmonization in the patent protection conferred on the same applicant by each of the participating Offices. Its successful implementation will surely be a step forward for patent owners with commercial interests in Europe and in the other main world markets involved.


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