Patent Prosecution Highway (PPH), the accelerated way for granting a European patent

Cristina Georgescu
Cristina Georgescu

The Patent Prosecution Highway (PPH) is a programme providing the applicant of a European patent with the opportunity to expedite patent prosecution, according to the official website of the European Patent Office (EPO), according to the epo.org.

Patent prosecution describes the interaction between applicants together with their representatives and the EPO with regard to a patent or a patent application. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

Pre-grant prosecution comprise the following steps:

1) Preparation of an application

To obtain patent rights for an inventor, the practitioner typically first drafts an application by interviewing the inventor to understand the nature of the invention and help clarify its novel features.

2) Filing an application

The patent applications have at least two components, including a general, written description of the invention and at least one “embodiment” thereof, and a set of “claims,” written in a special style that defines exactly what the applicant regards as the particular features of his or her invention. These claims are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before issuing a patent.

Patent applications also usually include (and may be required to include) a drawing or set of drawings, to facilitate the understanding of the invention. In applications involving genetics, samples of genetic material or DNA sequences may be required.

3) Search and examination of the application

The search and examination phases constitute the main part of the prosecution of a patent application leading to grant or refusal.

3a) A search is conducted by the patent office for any prior art that is relevant to the application in question and the results of that search are notified to the applicant in a search report. Generally the examiner conducting the search indicates in what aspect the documents cited are relevant (novelty, inventive step, background) and to what claims they are relevant. The materials searched vary, but principally cover all published patent applications and technical publications.

The search report is typically published with the patent application, 18 months after the earliest priority date, or if it is not available at that time it is published once it is available.

3b) Examination is the process by which a patent office determines whether a patent application meets the requirements for granting a patent. The process involves considering whether the invention is novel and inventive and is industrially applicable.

If the examiner finds that the application does not comply with requirements, an examination report is issued drawing the examiner’s objections to the attention of the applicant and requesting that they be addressed. The applicant may respond to the objections by arguing in support of the application, or making amendments to the application to bring it in conformity. Alternatively, if the examiner’s objections are valid and cannot be overcome, the application may be abandoned.

The process of objection and response is repeated until the patent is in a form suitable for grant, the Applicant abandons the applications, or a hearing is arranged to resolve the matter.

The search and examination process is principally conducted between the European patent office and the applicant. However, it is possible for interested third parties to file opinions on the patentability of an application.

PPH – The Patent Prosecution Highway

According to EPO Guidelines of Examination Part E VIII 4.3, The Patent Prosecution Highway (PPH) enables an applicant whose claims have been determined to be allowable to have a corresponding application which has been 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.

In other words, according to epo.org, in principle, the PPH allows an applicant to request accelerated patent prosecution at the EPO where a corresponding application has already been found to contain patentable/allowable claims at a PPH partner office.

The programme allows partner offices to reutilise work already available from another partner office and, hence, process applications in an accelerated manner.

A PPH request can be based on:

(i) the latest Patent Cooperation Treaty (PCT) work product (namely, Written Opinion of the International Search Authority or International Preliminary Report on Patentability / International Preliminary Examination Report) established by one of the PPH partner offices as International Search Authority or International P Examination Authority (i.e., PPH based on PCT work products); or

(ii) any national work product (office action indicating allowable claims) established during the processing of a national application or of a PCT application that has entered the national phase before one of the PPH partner offices (i.e., PPH based on national work products).

In either case,

– the work product(s) must determine one or more claims to be patentable/allowable,

– said claims must correspond with the claims filed in the application at the EPO, and

– the work product have been established by one of the EPO’s PPH partner offices.

According to epo.org, participation in the PPH programme at the EPO is free of charge.

However, the regular procedural fees apply.

To participate in the PPH programme, the applicant must meet the following requirements:

– the European patent application must have the same earliest date (i.e. priority or filing date) as the corresponding application,

– the corresponding application must have at least one claim that is patentable/allowable,

– all claims in the European patent application need to correspond sufficiently (claims are considered to fulfil this requirement if they have the same, a similar or a narrower scope),

– substantive examination of the European patent application must not have begun at the time the PPH request is filed.

Once the request for participation in the PPH programme has been granted, the EP application will be processed in an accelerated manner.

According to the epo.org, the EPO has gradually started implementing the PPH as a permanent procedure.

Thus, currently the EPO maintains PPH programmes with all IP5 Offices, i.e. JPO (Japan), KIPO (Republic of Korea), CNIPA (P.R. of China) and the USPTO (United States).

Further PPH partner offices are IPA (Australia), INPI (Brazil), CIPO (Canada), SIC (Colombia), ILPO (Israel), MyIPO (Malaysia), IMPI (Mexico), INDECOPI (Peru), IPOPHL (the Philippines), IPOS (Singapore) and SAIP (Saudi Arabia).

The PPH programmes with the Eurasian Patent Office (EAPO) and ROSPATENT (Russia) are currently suspended.

IP5 Offices: EPO, Japan, Korea, China and United States

According to OJ EPO 2014, A8, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO), referred to as the IP5 Offices, announced on 24 September 2013 their intention to launch a comprehensive PPH pilot programme.

According to OJ EPO 2016, A106 and OJ EPO 2022, A115, the IP5 Offices have decided to successively extend the comprehensive Patent Prosecution Highway (PPH) programme.

With effect from 6 January 2023, the PPH programme between the EPO and IP5 Offices is extended for an indefinite period, applying to PPH requests filed with the EPO on or after 6 January 2023, as mentioned in OJ EPO 2022, A115.

The EPO may terminate the IP5 PPH programme early if the volume of participation exceeds a manageable level, or for any other reason.

Republic of Peru – extended PPH programme  

According to “PPH pilot programme between the EPO and the National Institute for the Defense of Competition and Intellectual Property Protection (INDECOPI Peru) based on PCT and national work products” mentioned in  OJ EPO 2019, A107,

A PPH pilot programme between the EPO and INDECOPI Peru started on 2 January 2020, for a period of three years ending on 1 January 2023, applying to PPH requests filed with the EPO on or after 2 January 2020.

With effect from 2 January 2023, the PPH programme between the EPO and INDECOPI is extended for an indefinite period, applying to PPH requests filed with the EPO on or after 2 January 2023, according to “PPH programme between the EPO and the INDECOPI Peru based on PCT and national work products” mentioned in OJ EPO 2022, A116.

GPPH – The Global Patent Prosecution Highway

The EPO is not a participating office of GPPH.

The GPPH is a multilateral framework between national and regional intellectual property offices which bundles bilateral PPH programmes.

All PPH programmes at the EPO mirror the conditions applicable to the GPPH.

PACE request with the EPO – an alternative to PPH programme

If the examination has already begun or if the applicant is not in the possession of a patent granted by another partner office, then a good alternative option for accelerating prosecution is requesting the participating in the Programme for accelerated prosecution of European patent applications (PACE Programme/PACE request).

Applicants requiring faster search or examination can ask to have their applications processed under the programme for accelerated prosecution of European patent applications (PACE).

According to EPO Guidelines of Examination Part E VIII 4, a PACE request may be filed only once during each stage of the procedure, i.e. search and examination, and for one application at a time. A PACE request filed during search will not trigger accelerated examination. If the applicant wishes to have the application examined in an accelerated manner, a PACE request may be filed, once the application has entered the examination phase.

An application will be taken out of the PACE programme if:

– the PACE request has been withdrawn,

– the applicant has requested an extension of time limits,

– the application has been refused,

– the application has been withdrawn,

– the application is deemed to be withdrawn.

Additionally, accelerated prosecution will be suspended in the event of failure to pay renewal fees by the due date stipulated in Rule 51(1) EPC.

Romanian patent attorney Cristina Georgescu

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