The European Patent Office (EPO) and the Japan Patent Office (JPO) announced on 13 November 2009 their intention to launch a bilateral Patent Prosecution Highway pilot programme.

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. In turn the initiative is expected to improve patent quality and reduce the examination workload.

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 indicated to be patentable/allowable, the applicant may request accelerated examination at the JPO for the corres- ponding application filed with the JPO as the OSF. The procedures and require- ments for filing a request with the JPO for participation in the PPH pilot programme are available from the JPO website at www.jpo.go.jp. Where the JPO is the OSF, the applicant must provide the JPO with the necessary documents for requesting participation in the PPH pilot programme, or request

that the JPO obtain these documents via the EPO epoline system. In cases where the EP application has not been published, the applicant will be responsible for providing the necessary documents to the JPO.

Where the EPO is the OSF and the corresponding application filed with the JPO as the OFF contains claims that are determined to be patentable/allowable, the applicant may request participation in the PPH pilot programme at the EPO. Effective 29 January 2010, the proce- dures and requirements for filing a request with the EPO for participation in the PPH pilot programme are set forth below (II.B) and apply to PPH requests made on the basis of work products established during the processing of a national application before the OFF or a PCT application that has entered the national/regional phase before the OFF. With regard to the EPO-JPO PPH pilot programme based on PCT work products (i.e. WO-ISA, WO-IPEA and IPER), reference is made to the Trilateral PCT PPH pilot programme.

A. Trial period for the PPH pilot programme

The PPH pilot programme commences on 29 January 2010, for a trial period of two years ending on 28 January 2012. The EPO and the JPO 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 28 January 2012.

B. Requirements for requesting parti- cipation in the PPH pilot programme in 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) a European direct/Paris Convention application validly claiming the priority of one or more applications filed with the JPO

or

(b) a PCT application which has entered the regional phase before the EPO (Euro-PCT)

and was filed or has entered the regional phase respectively as of 29 January 2010. Examples of European applications that fall under this requirement are illustrated in the Annex.

Additionally, a divisional EP application of an earlier filed application in the OSF which validly claims the priority of one or more applications filed with the JPO is considered to be eligible.

(2) The JPO application(s) has/have at least one claim indicated by the JPO to be patentable/allowable. The applicant must submit a copy of the patentable/ allowable claims from the JPO appli- cation(s) and a translation thereof into one of the EPO official languages 1.

1 Claims are indicated to be allowable/patentable when the JPO examiner clearly identified the claims to be allowable/patentable in the latest office action. The office action includes: (a) Decision to Grant a Patent (b) Notification of Reasons for Refusal (c) Decision of Refusal (d) Appeal Decision. If the following standard expression is described in the "Notification of Reason for Refusal", those claims are clearly identified to be allowable/patentable: "<Claims(s) which has (have) been found no reason for refusal> At present for invention concerning Claim _, no reason for refusal is found."

(3) All the claims in the 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 JPO application(s). Claims will be considered to sufficiently correspond where, accounting for differ- ences due to claim format requirements, the claims are of the same or a similar scope or the claims in the EP application are narrower in scope than the claims in the JPO application(s). Additionally, a claim in the EP application which intro- duces a new/different category of claims than those indicated to be patentable/ allowable by the JPO is not considered to sufficiently correspond. The applicant is also required to submit a claims correspondence table in English. The claims correspondence table must indicate how all the claims in the EP application correspond to the patentable/ allowable claims in the JPO 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 JP) is available via the EPO website at http://www.epo.org.

(6) The applicant must submit a copy of all the Office actions (which are relevant to patentability) for each of the JPO application(s) containing the patentable/ allowable claims that are the basis for the request, and also a translation thereof into one of the EPO official languages.

(7) The applicant must submit copies of all the documents other than patent documents cited in the JPO office action.

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 any deficiencies in the request. Action on the application by the exam- iner will not be suspended pending a reply by the applicant to correct the request in a renewed request for partici- pation. If the request is not corrected, the applicant will be notified and the application will await action in its regular turn.

If any of the documents identified in points (2) and (6) above

(a) have already been filed in the EP application prior to the request for partici- pation in the PPH pilot programme, it will not be necessary for the applicant to resubmit these documents with the request for participation. The applicant may simply refer to these documents and indicate in the request for participa- tion in the PPH pilot programme when these documents were previously filed in the EP application.

(b) are available via AIPN (Advanced Industrial Property Network), the appli- cant does not need to submit a copy thereof, but has to provide a list of the documents to be retrieved. If the transla- tion(s) of the document(s) provided via AIPN is (are) not sufficient, the OSF examiner can request the applicant to submit an accurate translation. If the JPO application(s) is (are) unpublished, the applicant must submit the documents identified in points (2) and (6) above and a translation thereof upon filing the PPH request.

The EPO may request certified copies of the documents identified in points (2) and (6) above.

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 2.

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

2 Notice from the EPO dated 14 July 2007 concerning the programme for the accelerated prosecution of European patent applications "PACE", Special edition No. 3, OJ EPO 2007, 102.

Annex

Notes on par ticipation in the Patent Prosecution Highway (PPH) pilot programme between the JPO and the EPO

(EPA /EPO/OEB Form 1009 JP)

Introduction

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

Filling in Form 1009 JP

The sections of the form should be completed as follows:

JPO PCT application number: Enter the patent application number assigned by the JPO.

Filing date of JPO PCT application: Enter the ling date accorded by the JPO.

Corresponding EP application number: Enter the number of the corresponding European patent application which should be processed under PPH.

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

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

3. A copy of all c laims determined to be patentable/allowable by the JPO

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/allowable by the JPO with the PPH request or request that the EPO obtain these documents from the JPO, provided these documents are available via AIPN.

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

6. Copies of all documents c ited in the JPO of ce action(s) (except for patent documents)

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/allowable in the corresponding JPO application. The c laims correspond suf c iently when they are of the same or similar scope or the c laims in the EP application are narrower in scope than the c laims in the JPO application(s). A c laim is narrower in scope when the JPO c laim is amended to be fur ther limited by an additional feature that is suppor ted in the spec i cation (descr iption and/or c laims) of the EP application. A c laim in the EP application which introduces a new/dif ferent categor y of c laims to those

c laims indicated to be patentable/allowable by the JPO is not con sidered to suf c iently corres- pond. For example, if the JPO application only contains c laims to a process of manufactur ing a product, the c laims in the EP application are not considered to suf c iently correspond if the EP application introduces product c laims that are dependent on the corresponding process c laims.

When the c laims are identical or just literally translated, the applicant can indicate that " they are the same" in the table.

Applicants are requested to use one eld for each c laim.

Place: Enter the place of ling of Form 1009 JP.

Date: Enter the date of ling of Form 1009 JP.

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 secretar y) (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.

References: ar150; ar153;