UK IPO and EPO involvement in Patent Prosecution Highway

Step on the gas with this new option for speeding up the patent application process.

On 28 April 2008, the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) announced that they intend to launch a new trial cooperation initiative called the Patent Prosecution Highway (PPH) in September of this year.

The PPH promotes international collaboration between national intellectual property offices to enable national offices to exploit relevant work already carried out by another national office.

Similar PPH programs already exist between the UK Intellectual Property Office (UK-IPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), IP Australia, the Canadian Intellectual Property Office (CIPO) and the USPTO but, until now, the EPO has not taken part.

President of the EPO, Alison Brimelow, commented that “Being prepared to “utilize” work is both rational and essential if the patent system is to keep its head above water”, adding that “exploring the implications of projects like PPH is very important”.

The Patent Prosecution Highway at the EPO is due to start in September but the details of the initiative, including the point at which the patent applications first filed at the USPTO should be handed over to EPO examiners, are still being finalized. One possibility is that it would be at the time that the USPTO issues the first office action.

The PPH aims to accelerate the patent examination procedures already available at the EPO and USPTO. The PPH will enable applicants to obtain corresponding patents faster and more efficiently. It will also allow each office to make use of the work previously done by the other office and, in so doing, reduce duplication. Further, it is hoped that the initiative will reduce examination workload, reduce backlogs and thus help to improve patent quality.

Under the PPH, an applicant whose application filed with either the EPO or USPTO contains at least one allowable claim may request that the other office fast-track the examination of corresponding claims in corresponding applications.

The trial period will be set for one year but may be extended or terminated earlier, depending on volume of activity and other factors.

The Japanese Patent Office (JPO) is now also considering whether to take part in a similar scheme with the EPO.

The PPH between the USPTO and the EPO is one of a series of measures adopted by leaders of the world’s three biggest intellectual property offices, the EPO, JPO and USPTO, the Trilateral Offices, to help improve the quality of examination processes, reduce processing time of patent applications, and to promote dissemination of information between offices.

In the United Kingdom, the UK-IPO has been involved in a pilot PPH program with the JPO since July 2007 and the USPTO since September 2007. The PPH provides a means of accelerating the substantive examination procedure for a patent application made to the UK-IPO which claims priority from an earlier application made to either the USPTO or JPO, where the USPTO or JPO have found at least one claim in the application to be allowable. Similarly, accelerated examination at the JPO and USPTO is also possible, where an application to these offices is based on a priority application filed at the UK-IPO which is found to have at least one claim allowable at the substantive examination stage at the UK-IPO. This existing procedure is now being expanded to cover the national phase of applications made under the Patent Cooperation Treaty (PCT). In so doing, this will increase the number of applications which are eligible for accelerated substantive examination under the PPH.

If you require further details of how the Patent Prosecution Highway operates, please contact us. Alternatively, further information is available on the UK Intellectual Property Office website at www.ipo.gov.uk on the EPO website at www.epo.org and on the USPTO website at www.uspto.gov.