The Trilateral Offices announced on 13 November 2009 that they intend to launch a new Patent Prosecution Highway (PPH) pilot utilising PCT work products as of 29 January 2010.

II. PCT-PPH 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.

Under the PCT-PPH pilot programme a PPH request can be based on the latest PCT work product (written opinion of the ISA (WO-ISA) or international preliminary examination report (IPER)) established by one of the Trilateral Offices as ISA or IPEA, where this work product determines claims to be patentable/allowable.

Where the EPO is the ISA, or ISA and IPEA, and the PCT application contains claims that are determined to be patent- able/allowable by the EPO as ISA or IPEA, the applicant may request acceler- ated examination at the JPO and the USPTO when the application has entered the national phase before these offices. The procedures and require- ments for filing a request with the JPO and the USPTO for participation in the PCT-PPH pilot programme are available from the JPO website at www.jpo.go.jp and from the USPTO website at www.uspto.gov.

Where either the JPO or the USPTO was the ISA, or ISA and IPEA, and the PCT application contains claims that are determined to be patentable/allowable by that ISA or IPEA, the applicant may request participation in the PCT-PPH pilot programme at the EPO when the application has entered the European phase. The procedures and require- ments for filing a request with the EPO for participation in the PCT-PPH pilot programme are set forth below.

With regard to PPH requests made on the basis of national work products, reference is made to the EPO-JPO and the EPO-USPTO bilateral PPH programmes.

A. Trial period for the PCT-PPH pilot programme

The PCT-PPH pilot programme will commence on 29 January 2010, for a period of two years ending on 28 January 2012. The trial period may be extended if necessary to adequately assess the feasibility of the PCT-PPH programme. The Trilateral Offices 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 PCT-PPH pilot programme early if the volume of participation exceeds a manageable level, or for any other reason. Notice will be published if the PCT-PPH pilot programme is terminated before 28 January 2012.

B. Requirements for requesting participation in the PCT-PPH pilot programme in the EPO

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

(1) Either the JPO or the USPTO has been ISA. Where a demand for PCT Chapter II has been filed, one of these offices has been IPEA as well. The PCT application may have been filed with any receiving Office and may claim priority from an earlier application filed with any member of the Paris Convention or the

WTO. The different filing scenarios that are covered by the pilot are illustrated in the Annex.

(2) The PCT application has at least one claim determined by the ISA or, where a demand under Chapter II has been filed by the IPEA to be patentable/allowable in the sense that it is novel, inventive and industrially applicable. In case any observation is made in Box VIII of the WO-ISA or IPER, as the case may be, the applicant must explain why the claim(s) is/are patentable/allowable, and may file amendments to overcome these observations. The applicant must submit a copy of the claims deemed patentable/ allowable as filed or as amended under Article 34(2)(b) PCT and a translation thereof in one of the EPO official languages, unless either of these is already available to the EPO.

(3) All the claims in the application on file upon entry into the European phase or as amended within the Rule 161 EPC time limit must sufficiently correspond to the claims deemed patentable/allowable by the ISA or the IPEA. Claims will be considered to sufficiently correspond where, accounting for differences 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 PCT application(s). Additionally, a claim in the EP application which introduces a new/ different category of claims than those indicated to be patentable/allowable by the ISA or, where a demand under Chapter II has been filed, by the IPEA is not considered to sufficiently correspond. The applicant is also required to submit a claims correspondence table. The claims correspondence table must indi- cate how all the claims on file upon entry into the European phase or as amended within the Rule 161 EPC time limit correspond to the claims deemed patentable/allowable by the ISA or the IPEA.

(4) The application has entered the European phase on or after 29 January 2010 1, but substantive examination has not yet begun.

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

(6) The applicant must submit a copy of the WO-ISA or, where a demand under PCT Chapter II has been filed, of the IPER and a translation thereof in one of the EPO official languages, unless either of these are already available to the EPO.

(7) The applicant must submit copies of all documents other than patent docu- ments cited in the WO-ISA or IPER, unless these documents are already available to the EPO. If the EPO is not able to retrieve a patent document it will request the applicant to submit a copy of it. The EPO may also request the applicant to submit a translation of a patent document in one of the EPO official languages.

Where the request for participation in the PCT-PPH pilot programme is granted, the applicant will be notified and the EP application will be advanced out of turn for supplementary European search and substantive examination. In those instances where the request for partici- pation in the PCT-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

1 With reference to the filing scenarios illustrated in the Annex under (B), (D), (E1) and (E2), the relevant date for the YY application is the filing date, which should be on or after 29 January 2010.

one opportunity to correct any deficien- cies in the request. 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 the request is not corrected, the applicant will be notified and the application will await action in its regular turn.

C. Prosecution under PACE

Once the request for participation in the PCT-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

(A) The application is a national phase application of the corresponding international application.

(A') the application is a national phase application of the corresponding international application.

(The corresponding international application claims priority from a national application.)

(A'') The application is a national phase application of the corres- ponding international application.

(The corresponding international application claims priority from an international application.)

WO / ISA IPER

(B) The application is a national application on which the priority claim of the corresponding international application is based.

(C) The application is a national phase application of an international application claiming priority from the corresponding international application.

(D) The application is a national application claiming foreign/domestic priority from the corresponding international application.

(E1) The application is a divisional application of an application which satisfies requirement (A).

(E2) The application is an application claiming domestic priority from an application which satisfies requirement (B).

WO / ISA IPER

ISA / XX IPEA / XX

Notes on par ticipation in the Patent Prosecution Highway pilot programme based on PCT work products (PCT- PPH) between the Trilateral Of ces

(EPA /EPO/OEB Form 1009 PCT)

Introduction

These notes explain how to complete EPA /EPO/ OEB 1009 PCT (Par tic ipation in the PCT Patent Prosecution Highway pilot programme between the Tr ilateral O f ces). The form can be obtained from the EPO.

Filling in Form 1009 PCT

The sections of the form should be completed as follows:

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

International ling date of the application: Enter the international ling date of the application. Corresponding EP application number (if known): Enter the number of the corresponding European patent application which should be processed under PPH.

1. A copy of the WO - ISA or IPER

2. Request to obtain documents in 1. via Patentscope: Applicant can either provide a copy of the WO - ISA or IPER with the PPH request or request that the EPO obtain these documents via Patentscope.

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

4. Request to obtain documents in 3. via the Patentscope: Applicant can either provide a copy of all c laims determined to be patentable/allowable by the ISA /IPEA with the PPH request or request that the EPO obtain these documents via Patentscope.

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

6. Copies of all documents c ited in the WO - ISA or IPER (except for patent documents)

7. Claims correspondence table: A completed c laims correspondence table indicating how the c laims in the application on le upon entr y into the European phase or as amended within the Rule 161 EPC time limit correspond to the c laims deemed patentable/allowable in the latest international work product by the ISA or IPEA . The c laims correspond suf c iently where, accounting for dif ferences due to translations and c laim format requirements, the c laims are of the same or similar scope as the c laims indicated as patentable/allowable in the latest international

work product, or the c laims in the EP application are narrower in scope than the c laims indi cat ed as patentable/allowable in the latest international work product. A c laim is narrower in scope when a c laim indicated as patentable/allowable in the latest international work product 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 application. Additionally, a c laim in the EP application which introduces a new/dif ferent categor y of c laims than those indicated to be patentable/ allowable in the latest international work product, is not considered to suf c ient ly correspond. For example, the c laims indicated as patentable/allowable in the latest interna- tional work product only contain c laims to a process of manufactur ing a product, then the c laims of the application are not considered to suf c iently correspond if the c laims of the application introduce 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 PCT.

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

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;