EPO, JPO and USPTO launch PCT PPH pilot

01 March 2010

As of January 29 2010 the EPO has launched the so-called PCT Patent Prosecution Highway Pilot Programme with the USPTO and the JPO. The programme enable PCT applicants whose applications have been regionalised or nationalised before one or more of the three offices to have their patent application enter a fast track examination process, provided that another of the three offices has served as ISA and – where a demand was filed – as IPEA in the international phase. Moreover, the PCT application must contain claims that were deemed allowable in the international phase. To enter the fast track programme, the applicant must file a request and fulfil a series of requirements. The requirements for applications regionalised before the EPO are outlined here.

The applicant must file all non-patent literature documents cited in the IPER or written opinion of the ISA (WO-ISA) unless the documents are already available to the EPO. Moreover, the applicant must file the WO-ISA or the IPER in an official EPO language (English, French or German).

Furthermore, the applicant must file the allowed claims in a version that sufficiently corresponds to the claims that were deemed patentable. This means that minor amendments are allowable for example in order to comply with national differences in claim format. However, major amendments such as introducing a new claim category are not allowable. The EPO requires that a claim correspondence table is filed so that the examiner can easily determine whether the claims filed correspond to the claims that were deemed allowable in the international phase.

If the WO-ISA or the IPER contains objections under box VIII ("certain observations"), the applicant must file arguments and/or amendments overcoming these objections.

The programme applies to patent applications where substantive examination has not yet begun and which have entered the European phase on or after January 29 2010. Upon examination of the request to participate, the applicant is notified as to whether participation is granted or whether the request contains defects. The applicant is granted one opportunity to correct a defect request.

The programme will run for a test period of two years and provides no restrictions as to which office served as receiving office or where possible priority applications were filed.

The procedures and requirements for filing a request with the JPO and USPTO for participation in the pilot programme are available from the JPO and USPTO websites.