Recently, we have seen a growing number of tools that allow French and other European applicants to speed up the issuing procedure for some of their patents in various countries; this is particularly due to the development of PPH (Patent Prosecution Highway) programmes, which the European Patent Office (EPO) is involved in. In addition to this, the EPO has recently set up a new service that facilitates access to these PPH programmes: the PCT Direct procedure.
On an international level, there is a growing desire for patent issuing procedures to be quick, simple and standardised, without detracting from the quality of the examinations carried out. This desire is born from the tough economic climate of recent years, which is forcing offices as well as applicants to try and reduce the costs linked to the examination procedures.
It was with this in mind that bilateral and then multilateral programmes, called PPH programmes, were developed between patent offices. These programmes, kick-started by the Japanese patent office, are based on the idea that it is inefficient, for both patent offices and applicants, for a new patent application to be examined ab initio in each different country, especially when one office has already found that some claims are patentable before the examination process has even started in another country. On this basis, offices that have signed up to the scheme can offer an accelerated examination when a PPH processing request is received before the start of the examination process, where the claims in question have been deemed acceptable by another partner office.
These programmes do not guarantee that the examination will be any simpler, especially because the provisions governing assessment of certain conditions for patentability vary from country to country. That said, the fundamental idea behind these programmes is to reduce the examination procedure as much as possible. Statistics have also revealed that issue rates are higher for applications submitted through the PPH than for applications in general, and recent experience has shown us that PPH can also simplify the procedure in some cases.
The PPH programme can only be used if there is a positive conclusion from a partner office before examination has begun in other offices that are part of the programme. The EPO’s newly unveiled PCT Direct procedure makes it easier to obtain a positive conclusion from the EPO at the international phase. It is therefore one of the tools that is available to help speed up, and potentially simplify, national issuing procedures.
The key points to know in order to integrate these two types of procedure into the normal issuing procedure management toolkit are summarised below.
When can I request accelerated processing using a PPH programme?
Although very restrictive when first introduced, the PPH eligibility criteria have since been relaxed. Generally, applicants need only meet the three following conditions:
Which PPH programmes are available to me if I have a positive decision from the EPO?
For French applicants, the first positive decision they receive is usually from the EPO. The EPO may grant a positive decision during one of the following three stages prior to the start of the national phases: with the research report issued for priority requests (EP, FR, or PCT for example), with the international research report for PCT requests, or with the international preliminary examination report for PCT requests. As a result, the main PPH programmes that are available to French applicants are those that the EPO has signed up to.
For a long time, these were restricted to bilateral programmes with the American and Japanese patent offices. However, as of 6 January 2014, the EPO has joined a multilateral PPH programme, called the IP5 programme, that also includes the patent offices from the US, Japan, China and Korea.
In addition to this, three new bilateral programmes have been introduced since 6 January 2015, opening the possibility to apply for PPH accelerated examinations in Canada, Mexico, Israel and Singapore.
In which other situations might I be able to use the PPH programmes?
Although rarer, it may be the case that an issuing notification is received for a category of patent applications from an office other than the EPO, and when the examination has not yet started in some countries. This is more likely in places where examination can be postponed for one or more years after the start of the national phase (such as Canada or Japan).
It is also worth noting that another multilateral PPH programme was launched on 6 January 2014- the Global PPH (GPPH) programme. This programme currently covers patent offices from 19 countries, and includes Australia, Canada, Israel, Japan, Korea, Russia, Singapore, and the USA.
If an issuing notification is received from one of these countries, it is then also possible to request accelerated processing as part of the GPPH programme in one of the other partner countries, again provided examination has not yet started.
What is the cost of using the PPH programme?
At present, there are no charges associated with filing a PPH processing request. However, the request does need to be supported by a certain number of documents, and their translations where necessary. Fees for preparing the application and any attached documents must therefore be taken into consideration.
Furthermore, depending on the degree to which a PPH programme can speed up the examination process, some charges may become due earlier than they would for a regular application.
However, if the PPH programme leads to the procedure being simplified (which cannot be guaranteed), the overall cost of the procedure may turn out to be lower.
Which applicant has not had the frustrating experience of amending their PCT application (discussion in the description of identified prior arts for priority requests, possible limitation of the claims) in the hope of overcoming the EPO’s objections in its written response to a priority request, and then receiving an international research report and written decision that are exactly the same as those received in response to the priority request?
The new PCT Direct procedure, introduced by the EPO on 1 November 2014, aims to respond to the repeated demands of European applicants and representatives that their efforts to overcome objections are taken into consideration when preparing the international research report and associated written conclusion.
The theory:
Applicants who have submitted an international request (PCT request) for priority over an older application that has already been assessed by the EPO (e.g. a European request, but also a French request) must provide informal observations in response to all objections raised in the decision for the request that has been submitted as a higher priority.
In practice:
To take advantage of this procedure, applicants must submit these informal observations as a separate document (called a PCT Direct letter) when filing their PCT request, and must list this letter in the PCT request.
The informal observations may be:
Where this is the case, applicants are asked to attach an annotated copy of the PCT request, highlighting the differences.
There will be no direct reference to the PCT Direct letter or its contents in the written decision. Nevertheless, the Examiner responsible for international research will take these informal observations into account when writing the international research report and written decision.
PCT Direct letters are available to the public in the PCT request folder in WIPO’s PATENTSCOPE portal.
What is the cost associated with this procedure?
There are no official charges associated to this procedure. That said, it is worth anticipating the cost associated with preparing the informal observations, which can be thought of as similar to the cost of preparing a response to a research report or official letter.
In some cases, an adapted version of the text (limitation of claims, supplementary note to be added into the description) will also be necessary. However, this adaptation is generally carried out when preparing the PCT request documents.
In which circumstances can I use this procedure?
For an applicant who would like to use the PPH programmes after a positive decision from the EPO during the national phases, this new procedure is the first stage of discussion with the EPO Examiner.
In simple cases (minor objections, clear misunderstanding by the Examiner, simple limitation of claims that will easily overcome the objection and is acceptable to the applicant), this procedure may make it possible to obtain a positive conclusion from the EPO at the international phase without needing to go through the more costly preliminary international examination.
It is therefore beneficial financially, as the costs associated with preparing the informal observations are similar to those for preparing the observations used to support a preliminary international examination request, but there are no official charges linked to the PCT Direct procedure, whereas there are for a preliminary international examination (in excess of €2,000).
In more complicated cases, this procedure is more suitable for when:
It remains to be seen to what extent the informal observations submitted as part of this procedure will be taken into account by the Examiners. Nonetheless, the fact that this procedure has been introduced is a sign that the EPO is listening to the concerns being voiced by applicants.
Of course, the procedures discussed above are not suitable in all circumstances and for all applications. However, it is important to bear them in mind as one of the many tools available to help applicants optimise the management of their portfolios.
We are at here to provide any more information you may require on this topic, and to advise you, on a case-by-case basis, of the most suitable strategy for your situation. Do not hesitate to get in touch with your usual points of contact at REGIMBEAU.
