Presentation on theme: "Eugen Stohr Director International Legal Affairs, PCT"— Presentation transcript:
1 Patent Prosecution Highway Status Report and PPH metrics PCT MIA Canberra, February 2012 Eugen StohrDirector International Legal Affairs, PCTEuropean Patent OfficeMilena LonatiPrincipal Director Quality ManagementEuropean Patent Office
2 PPH: the EPO pilots - current status Bilateral PPH pilot between the USPTO and the EPOlaunch date 29 September 2008Bilateral PPH pilot between the JPO and the EPOlaunch date 29 January 2010Trilateral PCT PPH pilotExtension and revision of EPO PPH pilot programmeseffective 29 January 2012all pilot programmes operational until 28 January 2014expansion of eligibility scope: implementation of MOTTAINAIpromotion of efficiency: implementation of self-certification of claims
3 PPH: latest developments and future plans JPO proposal "MOTTAINAI" : relaxation of priority requirementsso far PPH schemes based on OFF - OSF workflowshift to OEE - OLE workflow, de-linking priorityeligibility of PPH request would depend on availability of work from a participating office on a patent family member, regardless oforder of filingof whether the office which provides work results is the OFFTIMING of EXAMINATION is crucialUSPTO proposal "PPH 2.0": next-generation PPH framework aiming at streamlining/liberalising PPH requirementsBuilds on MOTTAINAI and simplifies requirementsrelaxation of the applicable PPH documentation requirements involving inter alia the increased use of DAS and machine translation,harmonisation of claim correspondence concept, self-certification of claimsestablishment of a common framework to replace bilateral PPH arrangements
4 PPH: latest developments and future plans Trend: harmonisation/simplification of participation/eligibility requirements → development of a uniform, all-inclusive PPH schemeIssue of Quality and the potential development of a Quality Management System for PPH offices now explicitly being addressed in international discussionsIncreased use of the PCT PPHin particular as regards work products issued by the EPO: JPO received 286 requests where EPO = ISA//IPEA; USPTO received 621 requests where EPO = ISA/IPEA (status: January 2012)makes PCT international phase work products (i.e. WO/ISA, IPER) a key element of global work sharingunderlines the philosophy behind the PCTEPO is exploring conclusion of PCT PPH arrangements with further ISAs, in particular KIPO/SIPO
5 Envisaged implementation PPH: the EPO pilots - participation figuresPPH pilot programmeRequests filed at the EPOEligible requestsTrilateral PCT - PPH(launch )209199Bilateral JPO – EPO394373Bilateral USPTO - EPO(launch , revisedfrom )254182TOTAL857754PPH filing at the EPO has been at a moderate level
6 PPH filings in the global context (at end June 2011)  (a) OSF percentage share of worldwide PPH filingsPPH SchemeEPOJPOUSPTOOtherPCT-PPH5.2%27.8%66.6%0.4%Bilateral PPH4.4%14.0%48.6%33.0% (of which Canada=15.6%, KIPO=11.7%)(b) OFF percentage share of worldwide PPH filingsPPH SchemeEPOJPOUSPTOOtherPCT-PPH30.4%36.8%3.2%29.6% (of which KIPO=25.6%)Bilateral PPH1.6%51.5%33.1%13.8% (of which KIPO=8.2%, UKIPO=1.8%) Data from the PPH portal statistics site, 4 November 2011.
7 Envisaged implementation PPH: the EPO pilots - participation figures16%82%
8 Envisaged implementation PPH: the EPO pilots - number of PPH requests per month16%82%
9 Envisaged implementation PPH: the EPO pilots - technology area distribution16%82%JC abbreviation Name of joint cluster (Berlin cluster assigned by technical area)AVM Audio Video MediaBIO BiotechnologyCET Civil Engineering and ThermodynamicsCOM ComputersELE ElectronicsEST Electricity and Semiconductor TechnologyHN Human NecessitiesHP Handling and ProcessingIC Industrial ChemistryMO Measuring and OpticsPAOC Pure and Applied Organic ChemistryPOL PolymersTEL TelecomVGT Vehicles and General Technology
10 PPH: the EPO pilots - outcome of first action PPH pilot programmeEligible requestsNumber of processed files at EPO to date% positive EPO written opinionsTrilateral PCT-PPH125579%Bilateral JPO-EPO2961907%Bilateral USPTO-EPO104554%Overall525302
11 PPH: File selection effect when filing for PPH Population(Date of entry to regional phase >= )% with only A citations in ISR% of the EPO searches citing no additional X, Y or E documentsPCT-PPH files with first action in European phase75%35%Non-PPH accelerated search reference population weighted by ISA to match the above PCT-PPH population33%26%The PCT-PPH ISR A-only rate of 75% in the File selection effect table are for the 57 applications with a completed European (supplementary) search. Among all eligible PCT-PPH requests the ISR A-only rate is very similar: 74%.
12 PPH: Pendency to first action Population(Date of entry to regional phase >= ).The start date of the pendency calculation is in brackets.Number of applicationsAverage pendency to first action in daysAll PPH files with a first action (PPH request date)302143Euro-PCT bis files with ISA JPO or USPTO from all PPH programmes with a first action (PPH request date)199156Non-PPH Euro-PCT bis files with ISA JPO or USPTO and accelerated search requested and European supplementary search completed (date of request for accelerated search)499188
13 Average Number of Claims by PPH Programme Eligible PCT-PPH requestsAll claims at the OFF:Patentable claims at the OFF: 12.8Claims in the PPH filing at the EPO: 11.8Eligible JPO-EPO bilateral PPH programme requestsAll claims at the JPO:Patentable claims at the JPO: 8.8Claims in the PPH filing at the EPO: 8.7Eligible USPTO-EPO bilateral PPH programme requestsAll claims at the USPTO:Patentable claims at the USPTO: 16.4Claims in the PPH filing at the EPO: 11.8
14 PPH Evaluation: preliminary examiners' feedback 44% of responding examiners have cited at least some of the art or a family member listed by OFF23% state that the work provided by the OFF was useful or very useful (38% PCT-PPH and 19% bilateral PPH files)In 13% of all responses, examiners state that having OFF work results made processing of the application efficient or very efficient: (24% PCT-PPH and 10% bilateral PPH files).56% of users of the JP-EN machine translation found it to be at least 'usable'.
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