Update on the PPH Pilot Programme Between EPO and its Cooperating Offices

By: Alexandre Picot


Effective February 1st, 2017, a trial period of three years has started for the PPH pilot programme between the European Patent Office (EPO) and the Russian Federal Service for Intellectual Property based on PCT and national work products. Further, effective January 6th, 2017, the IP5 PPH pilot programme has been extended for a period of three years. The EPO has also agreed to start discussions on new PPH agreements with Brazil, Malaysia and the Philippines.

The Patent Prosecution Highway (PPH) pilot programme has been developed to expedite the examination process for patent applications filed internationally. Specifically, the PPH pilot programme is designed to reduce the delay in the examination of patent applications by taking advantage of “work sharing” between various patent offices.

At the European Patent Office (EPO), the PPH pilot programme is implemented through a series of agreements reached on an individual basis between the EPO and patent offices in foreign jurisdictions. Initially, the EPO first partnered with the United States Patent and Trademark Office (USPTO) in September 2008. Later, the EPO reached further agreements with the so called IP5 offices (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 USPTO) to establish a multilateral agreement, namely the IP5 PPH pilot programme, which has recently been extended for a period of three additional years (ending January 5th, 2020).

On the basis of a similar framework as the agreement between the EPO and the IP5 offices, the EPO has also started separate PPH pilot programmes with additional offices, namely the Canadian Intellectual Property Office (CIPO), the Israel Patent Office (ILPO), the Mexican Institute of Industrial Property (IMPI), IP Australia (IPA), the Intellectual Property Office of Singapore (IPOS) and the Superintendence of Industry and Commerce of Colombia (SIC).

Further, following the signing of an agreement by EPO President Benoît Battistelli and Russia’s Federal Service for Intellectual Property (ROSPATENT) Director General, Grigory Petrovich Ivliev, in October 2016, the EPO and the ROSPATENT have launched their joint PPH pilot programme. As a result, effective February 1st, 2017, a trial period of three years has started for the PPH pilot programme between the EPO and the ROSPATENT based on PCT and national work products.

Also, the EPO and Brazil’s National institute of Industrial Property (INPI) have agreed to increase their co-operation and have started discussions on a joint PPH pilot programme so that patent applicants from Europe and from Brazil will be able to request accelerated patent prosecution at the EPO or at the INPI. Similarly, the EPO is in the process of implementing additional PPH programmes with the Intellectual Property Office of the Philippines (IPOPHIL) and the Intellectual Property Corporation of Malaysia (MyIPO).

Participation in a PPH pilot programme before the EPO involves fulfilling several conditions. Pursuant to the program, an applicant whose claims are determined to be allowable or patentable in a first participating patent office may obtain a corresponding foreign patent faster and more efficiently in a second participating patent office. Accordingly, if the claims of the corresponding application are allowed in one participating country, the application is eligible for the PPH pilot programme.

As an example, under the PPH pilot programme between the EPO and the IP5 offices, a PPH request may be based either on the latest PCT work product established by one of the IP5 offices as ISA or IPEA, or on the national work product established during the processing of a national application or a PCT application that has entered the national phase before one of the IP5 offices. Furthermore, the EP application for which participation in the PPH pilot programme is requested must have the same earliest date as the corresponding application. Additionally, each and every claim in the EP application entered for the program must sufficiently correspond to or be amended to correspond to the claims indicated as allowable or patentable by the IP5 office. The claims in the EP application should have a similar or narrower scope than the claims in the corresponding application. In this regard, a claim that is narrower in scope occurs when a corresponding claim is amended to be further limited by an additional feature that is supported in the specification. When filing amendments, the Applicant should always bear in mind that the EP application may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. Finally, examination of said EP application must not have begun at the time of the request. Therefore, it is not possible to expedite an examination that has already begun, as the program is designed to expedite the application’s entry into prosecution, and not the actual actions of the EPO in examining the application.

It may be noted that, once the request for participation in a PPH pilot programme has been granted, the EP application will be processed in an accelerated manner, the conditions applicable to the PACE programme applying by analogy to the prosecution of EP applications processed under PPH pilot programmes.