Presentation is loading. Please wait.

Presentation is loading. Please wait.

Patent Prosecution Highway Status Report and PPH metrics PCT MIA Canberra, February 2012 Milena Lonati Principal Director Quality Management European Patent.

Similar presentations


Presentation on theme: "Patent Prosecution Highway Status Report and PPH metrics PCT MIA Canberra, February 2012 Milena Lonati Principal Director Quality Management European Patent."— Presentation transcript:

1 Patent Prosecution Highway Status Report and PPH metrics PCT MIA Canberra, February 2012 Milena Lonati Principal Director Quality Management European Patent Office Eugen Stohr Director International Legal Affairs, PCT European Patent Office

2 2/11 Bilateral PPH pilot between the USPTO and the EPO –launch date 29 September 2008 –http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20120118.html Bilateral PPH pilot between the JPO and the EPO –launch date 29 January 2010 –http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20120118a.html Trilateral PCT PPH pilot –launch date 29 January 2010 –http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20120119.html Extension and revision of EPO PPH pilot programmes –effective 29 January 2012 –all pilot programmes operational until 28 January 2014 –expansion of eligibility scope: implementation of MOTTAINAI –promotion of efficiency: implementation of self-certification of claims PPH: the EPO pilots - current status

3 3/11 JPO proposal "MOTTAINAI" : relaxation of priority requirements –so far PPH schemes based on OFF - OSF workflow –shift to OEE - OLE workflow, de-linking priority –eligibility of PPH request would depend on availability of work from a participating office on a patent family member, regardless of order of filing of whether the office which provides work results is the OFF –TIMING of EXAMINATION is crucial USPTO proposal "PPH 2.0": next-generation PPH framework aiming at streamlining/liberalising PPH requirements –Builds on MOTTAINAI and simplifies requirements relaxation 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 claims establishment of a common framework to replace bilateral PPH arrangements PPH: latest developments and future plans

4 4/11 Trend: harmonisation/simplification of participation/eligibility requirements development of a uniform, all-inclusive PPH scheme Issue of Quality and the potential development of a Quality Management System for PPH offices now explicitly being addressed in international discussions Increased use of the PCT PPH –in 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 sharing –underlines the philosophy behind the PCT –EPO is exploring conclusion of PCT PPH arrangements with further ISAs, in particular KIPO/SIPO PPH: latest developments and future plans

5 5/11 Envisaged implementation PPH filing at the EPO has been at a moderate level PPH: the EPO pilots - participation figures PPH pilot programmeRequests filed at the EPO Eligible requests Trilateral PCT - PPH (launch 29.01.2010) 209199 Bilateral JPO – EPO (launch 29.01.2010) 394373 Bilateral USPTO - EPO (launch 29.09.2008, revised from 29.01.2010) 254182 TOTAL857754

6 6/11 PPH SchemeEPOJPOUSPTOOther PCT-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%) PPH SchemeEPOJPOUSPTOOther PCT-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%) (a) OSF percentage share of worldwide PPH filings (b) OFF percentage share of worldwide PPH filings PPH filings in the global context (at end June 2011) [1][1] [1] Data from the PPH portal statistics site, 4 November 2011. http://www.jpo.go.jp/cgi/cgi-bin/ppph-portal/statistics/statistics.cgi

7 7/11 Envisaged implementation PPH: the EPO pilots - participation figures 16% 82%

8 8/11 Envisaged implementation PPH: the EPO pilots - number of PPH requests per month 16% 82%

9 9/11 Envisaged implementation PPH: the EPO pilots - technology area distribution 16% 82%

10 10/11 PPH pilot programme Eligible requestsNumber of processed files at EPO to date % positive EPO written opinions Trilateral PCT- PPH 125579% Bilateral JPO- EPO 2961907% Bilateral USPTO- EPO 104554% Overall5253027% PPH: the EPO pilots - outcome of first action

11 11/11 Population (Date of entry to regional phase >= 29.01.2010) % with only A citations in ISR % of the EPO searches citing no additional X, Y or E documents PCT-PPH files with first action in European phase 75%35% Non-PPH accelerated search reference population weighted by ISA to match the above PCT-PPH population 33%26% PPH: File selection effect when filing for PPH

12 12/11 PPH: Pendency to first action Population (Date of entry to regional phase >= 29.01.2010). The start date of the pendency calculation is in brackets. Number of applications Average pendency to first action in days All PPH files with a first action (PPH request date)302143 Euro-PCT bis files with ISA JPO or USPTO from all PPH programmes with a first action (PPH request date) 199156 Non-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 13/11 Eligible PCT-PPH requests –All claims at the OFF: 14.2 –Patentable claims at the OFF: 12.8 –Claims in the PPH filing at the EPO:11.8 Eligible JPO-EPO bilateral PPH programme requests –All claims at the JPO: 8.9 –Patentable claims at the JPO: 8.8 –Claims in the PPH filing at the EPO: 8.7 Eligible USPTO-EPO bilateral PPH programme requests –All claims at the USPTO: 16.4 –Patentable claims at the USPTO: 16.4 –Claims in the PPH filing at the EPO: 11.8 Average Number of Claims by PPH Programme

14 14/11 PPH Evaluation: preliminary examiners' feedback 44% of responding examiners have cited at least some of the art or a family member listed by OFF 23% 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'.

15 15/11 Need more information? www.epo.org Thank you for your attention


Download ppt "Patent Prosecution Highway Status Report and PPH metrics PCT MIA Canberra, February 2012 Milena Lonati Principal Director Quality Management European Patent."

Similar presentations


Ads by Google