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Patent Prosecution
Highway programme between the European Patent Office and the Canadian
Intellectual Property Office based on PCT and national work products
This text is intended for publication in the
Official Journal (OJ) of the EPO. It is made available in advance on
the EPO website merely as a courtesy to the public. Only the text
subsequently published in the officially certified PDF file of the OJ is
authentic. It cannot be guaranteed that this advance version accurately
replicates that text.
The present notice replaces that published in OJ EPO 2017, A107.
I. Background
The European Patent Office (EPO) and the
Canadian Intellectual Property Office (CIPO) have decided to extend the
comprehensive Patent Prosecution Highway programme.
The Patent Prosecution Highway (PPH)
leverages fast-track patent examination procedures already available at
the 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.
II. PPH programme
The PPH enables an applicant whose claims
have been determined to be patentable/allowable to have a corresponding
application filed with a PPH partner office processed in an accelerated
manner while at the same time allowing the offices involved to exploit
available work results.
Under the PPH programme a PPH request can be based
either on the latest PCT work product
(written opinion of the ISA (WO-ISA) or international preliminary
examination report (IPER)) established by one of the participating
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 participating
offices,
where this work product determines one or more claims to be patentable/ allowable.
Where the EPO work product contains one or
more claims that are determined to be patentable/allowable, the
applicant may request participation in the PPH programme at CIPO. The
procedures and requirements for filing a request with CIPO are available
via www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02160.html.
For the purposes of this notice
Office of Earlier Examination (OEE) refers
to CIPO, also in its capacity as ISA and/or IPEA, the work product of
which is used as a basis for the PPH request,
while the Office of Later Examination (OLE)
refers to the EPO as the office before which participation in the PPH
programme is being requested.
A. Term for the PPH programme between the EPO and CIPO
With effect from 6 January 2021 the PPH
programme between the EPO and CIPO is extended for an indefinite period.
The requirements laid forth below will apply to PPH requests filed with
the EPO on or after 6 January 2021.
The EPO may terminate the PPH programme if
the volume of participation exceeds a manageable level, or for any other
reason. Notice will be published if the PPH programme between the EPO
and CIPO is terminated.
B. Requirements for requesting participation in the PPH programme between the EPO and CIPO
In order to be eligible to participate in the PPH programme at the EPO, the following requirements must be met:
(1) The EP application for which
participation in the PPH programme is requested must have the same
earliest date as the corresponding application, whether this be the
priority or filing date of a corresponding national application filed
with CIPO (see Annex 1) or a corresponding PCT application for which
CIPO has been ISA and/or IPEA[ 1 ] (see Annex 2).
(2) The corresponding application(s) must
have at least one claim indicated by CIPO in its capacity as a national
office or ISA and/or IPEA to be patentable/allowable. The claim(s)
determined as novel, inventive and industrially applicable by the ISA
and/or IPEA has/have the meaning of patentable/allowable for the
purposes of this notice.
(3) All claims in the EP application for
which a request for participation in the PPH programme is made must
sufficiently correspond to the patentable/allowable claims in the OEE
corresponding 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 OEE corresponding application(s). In this regard, a claim that is
narrower in scope occurs when an OEE claim is amended to be further
limited by an additional feature that is supported in the specification
(description and/or claims). Additionally, a claim in the EP application
which introduces a new/different category of claim from those indicated
to be patentable/ allowable by the OEE is not considered to
sufficiently correspond. For example, where the OEE claims only contain
claims to a process of manufacturing a product, then the claims in the
EP application 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 declare that the claims
between the EP and the OEE applications sufficiently correspond.
(4) Substantive examination of the EP application for which participation in the PPH programme is requested has not begun. The examination starting date is visible
for unpublished applications only at the
request of the applicant or his representative or by inspecting the file
using the My Files service,
for published applications to all in the European Patent Register.
C. Documents required for participation in the PPH programme
For participation in the PPH programme at the EPO the applicant has to:
(1) file a request for participation in the PPH programme. The request form
EPA/EPO/OEB 1009 (Participation in the Patent Prosecution Highway (PPH) programme)
is available via the EPO website at www.epo.org;
(2) file a declaration of claims correspondence which is included in the request form EPA/EPO/OEB 1009;
(3) submit a copy of
either all the office actions for the OEE
corresponding application(s) containing the patentable/allowable claims
that are the basis for the PPH request and a translation thereof in one
of the EPO official languages,
or
the latest work product in the international
phase of a PCT application, the WO-ISA or, where a demand under PCT
Chapter II has been filed, the WO-IPEA or the IPER and a translation
thereof in one of the EPO official languages;
(4) submit a copy of the patentable/
allowable claim(s) from the OEE application(s) and a translation thereof
in one of the EPO official languages;
(5) submit copies of all the documents other
than patent documents cited in the OEE office action(s) or the PCT work
product referred to in point (3) above.
If any of the documents referred to in points (3) and (4) above
(a) have already been filed in the EP
application prior to the request for participation in the PPH programme,
it is not 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 programme when
these documents were previously filed in the EP application.
(b) are available via DAS (Dossier Access System)[ 2 ]
or Patentscope, the applicant does not need to submit a copy thereof,
but has to provide a list of the documents to be retrieved. Machine
translations will be admissible for the documents referred to in
points (3) and (4) above. The EPO will request applicants to submit a
translation of the documents referred to in points (3) and (4) above if
DAS does not provide a machine translation. The EPO can request
applicants to submit an accurate translation if the machine translation
is insufficient. If the OEE application(s) is (are) unpublished, the
applicant must submit the documents referred to in points (3) and (4)
above upon filing the PPH request.
When the requirements set forth above are
met, the request for participation in the PPH programme will be granted
and the EP application will be processed in an accelerated manner. In
those instances where the request for participation in the PPH 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 formal
deficiencies identified in the request. If the request is not corrected,
the application will be taken out of the PPH programme and the
applicant will be notified.
D. Prosecution in an accelerated manner
Once the request for participation in the
PPH programme has been granted, the EP application will be processed in
an accelerated manner. The conditions applicable to the PACE programme[ 3 ] apply by analogy to the prosecution of EP applications processed under the PPH programme between the EPO and CIPO.
Any inquiries concerning this notice may be addressed to Directorate European and International Legal Affairs, PCT, at
Annex 2
(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 corresponding international application.
(The corresponding international application claims priority from an international application.)
(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).
[ 1 ]
Applications for which the EPO was ISA and/or IPEA are not eligible for
processing via the PPH before the EPO as DO/EO. The EPO understanding
of the PPH is that an application is processed in an accelerated manner
on the basis of a patentability assessment made by another office. Where
the EPO has been ISA and/or IPEA, the PCT WO/ISA or IPER have
effectively the same status as a first communication in substantive
examination before the EPO as DO/EO. Thus, in this case there is no work
product that can be considered work done by “another” office. This
case can, however, fall under the regular programme for accelerated
processing of European patent applications (“PACE”) which the applicant
can request.
[ 2 ] CIPO: Canadian Patents Database.
[ 3 ]
Notice from the EPO dated 30 November 2015 concerning the programme for
the accelerated prosecution of European patent applications – “PACE”, OJ EPO 2015, A93.