The “Patent Prosecution Highway” (PPH) trial scheme was launched on 29 September 2008 to promote cooperation between the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO). By permitting each Office to exploit the work previously done by the other, the PPH aims to fast-track patent examination procedure, potentially allowing patent applicants to obtain corresponding patents faster and more efficiently.

The PPH enables an applicant whose claims are determined to be allowable in the Office of First Filing (OFF) to have the corresponding application moved to the front of the examination queue in the Office of Second Filing (OSF), enabling the OSF to exploit the examination results of the OFF. The rules of eligibility to use the PPH before the EPO include that:

  • The European patent (EP) application is a Paris Convention application validly claiming priority of one or more applications filed with the USPTO.
  • The USPTO application(s) has at least one claim deemed to be patentable by the USPTO. The applicant must submit a copy of the patentable claims from the USPTO application(s) to the EPO.
  • The claims in each EP application must sufficiently correspond to the patentable claims in the USPTO application(s). Essentially, the claims must be (or amended to be) of the same or similar scope. The applicant is required to submit a “claims correspondence table” indicating how the claims correspond.
  • Examination of the EP application has not already begun at the EPO.
  • The applicant must file a participation request form at the EPO.
  • The applicant must submit a copy of all relevant Office actions from each of the USPTO application(s) containing the allowable claims that are the basis for the request.
  • The applicant must submit copies of all the documents cited in the USPTO Office Action in one of the EPO official languages, except for European patents or published European patent applications.

If all the above criteria are not met, the applicant will be given one opportunity to correct the request, otherwise the applicant will be notified and examination will proceed as normal.

COMMENT

Most applicants will regard the PPH as a sensible move to speed up the prosecution process, and hence drive down costs. However, potential problems are sure to arise in certain subject matter areas, e.g., business methods, computer-implemented inventions and biotechnology inventions, where there remain dissimilarities as to how the two Offices regard such technologies.