The Patent Prosecution Highway pilot programme (PPH) between the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) based on national work products was launched on 29 September 2008 and has been extended twice since its launch.

The EPO and the USPTO have agreed to revise the participation requirements and extend the trial period for the Patent Prosecution Highway Programme until 28 January 2014, with effect from 29 January 2012.

The Patent Prosecution Highway leverages fast-track patent examination procedures already available at both offices to allow applicants to obtain corresponding patents faster and more efficiently. It also permits each office to exploit the work previously done by the other office.

The present notice replaces that published in the OJ EPO 2010, 518 f.

II. Patent Prosecution Highway pilot programme using USPTO national work products

The PPH enables an applicant whose claims have been determined to be patentable/allowable to have a corres- ponding application filed with a PPH partner office processed in an acceler- ated manner while at the same time allowing the offices involved to exploit available work results.

Where 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. The procedures and requirements for filing a request with the USPTO for participation in the PPH pilot programme before the USPTO are available from the USPTO website at www.uspto.gov.

Where the US application contains claims that are determined to be patentable/allowable, the applicant may request participation in the PPH pilot programme at the EPO for the corres- ponding application filed with the EPO.

With effect from 29 January 2012, the procedures and requirements for filing a request with the EPO for participation in the PPH pilot programme on the basis of national work products established during the processing of a national application before the USPTO or a PCT application that has entered the national phase before the USPTO are set forth below (B) and apply to PPH requests made on or after 29 January 2012.

With regard to the utilisation of PCT inter- national phase work products (WO/ISA, WO/IPEA and IPER) established by the USPTO in its capacity as ISA and/or IPEA, reference is made to the Trilateral PCT PPH pilot programme 1.

A. Trial period for the PPH pilot programme

The PPH pilot programme with the revised requirements will commence on 29 January 2012, for a period of two years ending on 28 January 2014. The revised requirements will apply to PPH requests filed with the EPO on or after 29 January 2012.

1 See OJ EPO, 2012, 89 f.

The EPO and the USPTO will evaluate the results of the pilot programme to determine 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 2014.

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

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

(1) The EP application for which partici- pation in the PPH pilot programme is requested and the corresponding US application must have the same priority/ filing date. In particular the EP appli- cation, including a Euro-PCT application:

(Case I) is an application that validly claims the priority of one or more applications filed with the USPTO (see Annex, tables A, B, C and D);

or

(Case II) is an application which is the basis of a valid priority claim for the application filed with the USPTO (see Annex, tables E, F and G);

or

(Case III) is an application which shares a common priority document with the application filed with the USPTO (see Annex, tables H, I, J, K and L);

or

(Case IV) and the US application are derived from a PCT international application having no priority claim (see Annex, table M).

(2) The corresponding US application(s) has/have at least one claim indicated by the USPTO to be patentable/allowable.

(3) The claims in the EP application for which a request for participation in the PPH pilot programme is made must suffi- ciently correspond or be amended to sufficiently correspond to the patentable/ allowable claims in the corresponding US application(s). Claims are 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 US appli- cation(s). In this regard, a claim that is narrower in scope occurs when a USPTO claim is amended to be further limited by an additional feature that is supported in the specification (descrip- tion and/or claims). Additionally, a claim in the EP application which introduces a new/different category of claims than those indicated to be allowable/patent- able by the USPTO is not considered to sufficiently correspond. For example, where the USPTO claims only contain claims to a process of manufacturing a product, then the claims in the EP appli- cation are not considered to sufficiently correspond if the EP claims introduce product claims that are dependent on the corresponding process claims. The applicant is required to submit a declaration that the claim(s) sufficiently correspond between the EP and US applications.

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

C. Documents required for partici- pation in the PPH pilot programme at the EPO

For participation in the PPH pilot programme at the EPO the applicant has to:

(1) file a request for participation in the PPH pilot programme. A request form (EPA/EPO/OEB 1009 US) is available via the EPO website at www.epo.org;

(2) file a declaration of claims corres- pondence (tick the appropriate box in the PPH request form);

(3) submit a copy of all the office actions for the corresponding US application(s) containing the patentable/allowable claims that are the basis for the PPH request;

(4) submit a copy of the patentable/allow- able claim(s) from the US application(s);

(5) submit copies of all the documents other than patent documents cited in the USPTO office action(s).

Where the request for participation in the PPH pilot programme is granted, the applicant will be notified and the EP application will be processed in an accelerated manner. 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. If the request is not corrected, the applicant will be notified.

If any of the documents identified in points (3) and (4) 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 PPH request. 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 EP application.

(b) are available via PAIR (Patent Application Information Retrieval), the applicant does not need to submit a copy thereof, but has to provide a list of the documents to be retrieved. If the US application(s) is (are) unpublished, the applicant must submit the documents identified in points (3) and (4) above upon filing the PPH request.

The EPO may request certified copies of the documents identified in points (3) and (4).

D. 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, PCT, at international_legal_affairs@epo.org.

2 Notice from the EPO dated 4 May 2010 concerning the programme for accelerated prosecution of European patent applications "PACE", OJ EPO 2010, 352.

Annex

Pr ior ittsanspruch Pr ior ity c laim Revendicat ion de pr ior it

EPA -Anme ldung EPO applicat ion Demande OEB

Pr ior ittsanspruch Pr ior ity c laim Revendicat ion de pr ior it

Pr ior ittsanspruch Pr ior ity c laim Revendicat ion de pr ior it

USPTO -Anmeldung USPTO applicat ion Demande USPTO

USPTO -Anmeldung USPTO applicat ion Demande USPTO

Notes on par ticipation in the Patent Prosecution Highway (PPH) pilot programme between the USPTO and the EPO based on national work products

(Form EPA /EPO/OEB 1009 US)

Introduction

These notes explain how to complete form EPA /EPO/OEB 1009 US (Par tic ipation in the Patent Pro secution Highway pilot programme between the USPTO and the EPO based on national work products). The form can be obtained from the EPO.

Filling in form 1009 US

The sections of the form should be completed as follows:

US application number: Enter the patent application number assigned by the USPTO. This application has at least one c laim indicated by the USPTO to be patentable/ allowable.

Filing date of US application: Enter the (cid:191) ling date accorded by the USPTO.

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

1. A copy of USPTO of (cid:191) 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 (cid:191) ce action(s) with the PPH request or request that the EPO obtain these documents from the USPTO, provided these documents are available via PAIR .

3. A copy of all c laims determined to be patentable/allowable 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/allowable by the USPTO with the PPH request or request that the EPO obtain these documents from the USPTO, provided these documents are available via PAIR .

5. Translations of the documents in 1 and 3 above in one of the EPO of (cid:191) c ial languages

6. Copies of all documents c ited in the USPTO of (cid:191) ce action(s) (except for patent documents)

7. Dec laration of c laims correspondence The applicant dec lares that the c laims suf (cid:191) c iently correspond between the EP and US applications.

Place: Enter the place of (cid:191) ling of form 1009 US.

Date: Enter the date of (cid:191) ling of form 1009 US.

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 (cid:191) 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), (cid:191) rst sentence, Rule 152(1) EPC), in which case an author isation must be (cid:191) led.

References: ar150; ar153;