The European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) announced on 28 April 2008 that they intended to launch a new trial co-operation initiative called the Patent Prosecution Highway in September 2008.

The Patent Prosecution Highway will leverage fast-track patent examination procedures already available at both Offices to allow applicants to obtain corresponding patents faster and more efficiently. It will also permit each Office to exploit the work previously done by the other Office and reduce duplication. In turn the initiative will reduce the examination workload and improve patent quality.

II. Patent Prosecution Highway Pilot Programme

The PPH was established to enable an applicant whose claims are determined to be patentable/allowable in the Office of first filing (OFF) to have the corres- ponding application filed in the Office of second filing (OSF) advanced out of turn for examination while at the same time allowing the OSF to exploit the work results of the OFF.

Where the EPO is the OFF and the EP application contains claims that are determined to be patentable/allowable, the applicant may request accelerated examination at the USPTO for the corresponding application filed with the USPTO as the OSF. The procedures and requirements for filing a request with the USPTO for participation in the PPH pilot programme are available from the USPTO website at: www.uspto.gov. Where the USPTO is the OSF, the appli- cant must provide the USPTO with the necessary documents for requesting participation in the PPH pilot programme. It is envisaged to allow applicants to request that the EPO

obtain the necessary documents electronically via Document Access System (DAS).

Where the EPO is the OSF and the corresponding application filed with the USPTO as the OFF contains claims that are determined to be patentable/allow- able, the applicant may request participation in the PPH pilot programme at the EPO. The procedures and requirements for filing a request with the EPO for participation in the PPH pilot programme are set forth below.

A. Trial Period for the PPH Pilot Programme

The PPH pilot programme will commence on 29 September 2008, for a period of one year ending on 29 Septem- ber 2009. The trial period may be extended for up to an additional year if necessary to adequately assess the feasibility of the PPH programme. The EPO and the USPTO will evaluate the results of the pilot programme to deter- mine whether and how the programme should be fully implemented after the trial period. The Offices may also terminate the PPH pilot programme early if the volume of participation exceeds a manageable level, or for any other reason. Notice will be published if the PPH pilot programme is terminated before 29 September 2009.

B. Requirements for Requesting Participation in the PPH Pilot Programme before the EPO.

In order to be eligible to participate in the PPH pilot programme, the following conditions must be met:

(1) The EP application is a Paris Convention application validly claiming the priority of one or more applications filed with the USPTO.

(2) The USPTO application(s) has/have at least one claim determined by the USPTO to be patentable/allowable. The applicant must submit a copy of the patentable/allowable claims from the USPTO application(s).

(3) All the claims in each EP application for which a request for participation in the PPH pilot programme is made must sufficiently correspond or be amended to sufficiently correspond to the patentable/ allowable claims in the USPTO applica- tion(s). Claims will be considered to suffi- ciently correspond where, accounting for differences due to claim format require- ments, the claims are of the same or a similar scope. The applicant is also required to submit a claims correspon- dence table in English. The claims corre- spondence table must indicate how all the claims in the EP application correspond to the allowable claims in the USPTO application(s).

(4) Examination of the EP application for which participation in the PPH pilot programme is requested has not begun.

(5) The applicant must file a request for participation in the PPH pilot programme. A request form (EPA/EPO/ OEB 1009) has been available from the EPO website at http://www.epo.org since 26 September 2008.

(6) The applicant must submit a copy of all the Office actions (which are relevant to patentability) for each of the USPTO application(s) containing the allowable claims that are the basis for the request.

(7) The applicant must submit copies of all the documents cited in the USPTO Office action and translations thereof in one of the EPO official languages except for EP patents or published EP patent applications.

The request for participation in the PPH pilot programme and all the supporting documents must be submitted to the EPO in paper form. The EPO will notify applicants accordingly once the specially adapted version of the EPO Online Filing software for the purpose of filing PPH requests becomes available.

Where the request for participation in the PPH pilot programme is granted, the applicant will be notified and the EP application will be advanced out of turn for examination. In those instances

where the request for participation in the PPH pilot programme does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to correct the request in a renewed request for participation. Action on the application by the examiner will not be suspended pending a reply by the applicant to correct the request in a renewed request for participation. If not corrected, the applicant will be notified and the application will await action in its regular turn.

If any of the documents identified in items (2), (6) and (7) above have already been filed in the US application prior to the request for participation in the PPH pilot programme, it will not be necessary for the applicant to resubmit these docu- ments with the request for participation. The applicant may simply refer to these documents and indicate in the request for participation in the PPH pilot programme when these documents were previously filed in the US application.

C. Prosecution under PACE

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

Any claims amended or added after the grant of the request for participation in the PPH pilot programme must suffi- ciently correspond to one or more allow- able claims in the US application(s). The applicant is required to submit a claims correspondence table along with the amendment (see B.(3) above).

Any inquiries concerning this notice may be directed to Eugen Stohr, Director, International Legal Affairs at international_legal_affairs@epo.org.

Notes on par ticipation in the Patent Prosecution Highway (PPH) Pilot Programme between the USPTO and the EPO

(EPA /EPO/OEB Form 1009)

Introduction

These notes explain how to complete EPA /EPO/ OEB Form 1009 (Par tic ipation in the Patent Pro - secution Highway pilot programme between he USPTO and the EPO). The form can be obtained from the EPO.

Filling in Form 1009

The sections of the form should be completed as follows:

USPTO application number: Enter the patent application number assigned by the USPTO.

Filing date of USPTO application: Enter the ling date accorded by the USPTO.

Corresponding EP application number: Enter the number of the corresponding Euro - pean patent application which should be proc - essed under PPH.

1. A copy of USPTO of ce action(s)

2. Request to obtain documents in 1. via the Dossier Access System: Applicant can either provide a copy of the USPTO of ce action(s) with the PPH request or request that the EPO obtain these documents from the USPTO 1.

3. A copy of all c laims determined to be patentable by the USPTO

4. Request to obtain documents in 3. via the Dossier Access System: Applicant can either provide a copy of all c laims determined to be patentable by the USPTO with the PPH request or request that the EPO obtain these documents from the USPTO 1.

5. Translated versions of the documents in 1. and 3. above in one of the EPO of c ial languages

6. Translated versions of foreign language c itations in one of the EPO of c ial languages

7. Claims correspondence table: A completed c laims correspondence table indi - cating how the c laims of the European patent application which is requested to be processed under PPH correspond to the c laims determined to be patentable in the corresponding USPTO application. The c laims correspond suf c ient ly

1 Please note that it is currently not feas ible for the EPO to obtain the necessary documents from the USPTO via Doss ier Access System (DAS). The par tic ipating O f ces will notify applicants accord- ing ly once this poss ibility becomes available.

when they are of the same or similar scope. Applicants are requested to use one eld for each c laim. Place: Enter the place of ling of Form 1009. Date: Enter the date of ling of Form 1009. Name: Enter the name of the person entitled to sign. Signature: If the applicant is a legal person other than an individual, the form must be signed either by a person entitled to sign under the law or the applicant 's statute, ar tic les of assoc iation or the like, with an indication of the capac ity of the person doing so (e.g. chairman, director, company secretary) (Ar t. 133(1) EPC), in which case no author isation need be led or by another employee of the applicant, provided the lat ter s pr inc ipal place of business is in a contracting state (Ar t. 133(3), rst sen- tence, Rule 152(1) EPC), in which case an author isation must be led.

Online ling

Please note that online ling is currently not avail- able for PPH requests and the necessary suppor t- ing documentation. The EPO will notify applicants accordingly once the spec ially adapted version of the EPO Online Filing sof tware for the purpose of ling PPH requests will become available.

References: ar150; ar153;