PPH at the EPO – an Update

The European Patent Office (EPO) was fashionably late to the Patent Prosecution Highway (PPH) party with the first pilot starting in September 2008.  The options for electing to process a European patent application under the PPH have changed considerably since then, but it has not had a big impact on the EPO nor on applicants.

Although the EPO still has not published any useful information about PPH at the EPO other than how to apply for it, we know that only a few hundred applications have been granted PPH status since start of that first pilot in 2008.  However, it is a fact that there can be significant benefits for applicants (even ignoring the fast tracking that comes with PPH status) and this, coupled with new opportunities for electing PPH, is giving rise to an increased rate of PPH requests.

The original scheme allowed PPH status of European patent applications based on claims allowed in a related national US patent application.  This was not well taken-up, possibly due in part to restrictions on eligibility for the scheme where there was a priority claim, and the programme was extended once but has now lapsed.  It is no longer possible to get PPH status for European patent application based on a US national application.  Another pilot commenced in conjunction with the Japanese Patent Office (JPO) in January 2010 and is scheduled to run for two years.  However, the scheme that we understand to have been taken-up the most is the PCT-PPH pilot programme that also started in January 2010.

A large number of applications qualify for PCT-PPH at the EPO.  Briefly, if a Written Opinion or  International Preliminary Examination Report prepared by the USPTO or the JPO indicates allowable claims, a PPH request can be based on claims corresponding to those allowable claims.

It should be noted that even if the Written Opinion indicates allowable claims, the EPO examiner will always carry out an additional prior art search and of course there is always a possibility that the examiner will find prior art that they deem to be sufficiently relevant to form the basis of an objection.

Where there is no new prior art found, though, indications are that the examiner will sometimes accept the opinion of the PCT search or examining authority and issue a notice of allowance under Rule 71(3) EPC without first raising any objections.  This is the sweet spot as far as applicants are concerned because in such cases the costs of examination are, in effect, zero.  EPO examiners are, however, permitted to perform their own examination if they deem this to be appropriate, and there are instances where the EPO has raised issues that were not raised previously.  Nevertheless, PPH is one option for increasing the probability of an application being allowed without any objections being raised and, even where objections are raised, for reducing the overall costs.

Paul Derry 12 May 2011

Return to news list