Speed of prosecution at the EPO Andy Harding – October 20th, 2017 Patent and Trade Mark Attorneys www.forresters.co.uk Birmingham | Liverpool | London | Munich | Southampton

Summary Speeding up PPH – Patent Prosecution Highway PACE - Accelerated prosecution Other mechanisms to speed prosecution Slowing down Extensions, further processing Other delay tactics www.forresters.co.uk

PPH - Patent Prosecution Highway www.forresters.co.uk PPH - Patent Prosecution Highway

PPH – Patent Prosecution Highway Which countries are involved? PPH IP5 – extended to January 2020 European Patent Office (EPO) Japan Patent Office (JPO) Korean Intellectual Property Office (KIPO) State Intellectual Property Office of the People's Republic of China (SIPO) United States Patent and Trademark Office (USPTO) Other bilateral agreements with Australia, Canada, Israel, Mexico, Malaysia, Philippines, Russia and Singapore Brazil joining in 2018 www.forresters.co.uk

PPH – Patent Prosecution Highway How IP5 PPH works If one of the IP5 offices finds allowable claims, the corresponding application at another IP5 office can be accelerated. PPH request can be made at EPO when: an IP5 country was the ISA on the PCT case an IP5 country examined a corresponding application www.forresters.co.uk

PPH – Patent Prosecution Highway Requirements EPO and ‘base’ applications must share the same priority date Base application must have at least one allowable claim Claims must ‘sufficiently correspond’ Same or similar scope, or narrower in scope Minor differences in claim format allowed Introducing a new/different category of claims not allowed Must request before EPO examination has begun www.forresters.co.uk

PPH – Patent Prosecution Highway Process To initiate PPH at EPO file a PPH request form Declare that claims ‘sufficiently correspond’. submit copies of earlier OA, allowable claims, non-patent references machine translations acceptable don’t need to file copies if already available to EPO, through Patentscope or Dossier Access System (DAS) No fee www.forresters.co.uk

PPH – Patent Prosecution Highway Is it worth it? ….Not really PPH at EPO will not increase chances of grant PPH requests are made public - alerting competitors Aligning EPO claims to those of other jurisdictions not always ideal Exactly the same acceleration can be achieved using PACE not on public file still free no constraints on claim amendments www.forresters.co.uk

PACE – Accelerated examination www.forresters.co.uk PACE – Accelerated examination

PACE – accelerated examination Up to now free No form needed 3 months to next office action No restrictions on use – self policing From January 2016 Restrictions introduced www.forresters.co.uk

PACE – accelerated examination Restrictions Separate requests for search and examination phases Requesting an extension will lose PACE status Can’t re-enter PACE Blanket PACE requests not allowed. Need to file a form But still better than PPH www.forresters.co.uk

Other ways to speed prosecution www.forresters.co.uk

Other ways to speed prosecution ‘Early certainty’ initiative 6 months to issue search report Aim to conclude examination within 12 months Happens automatically Reduces the relative value of PACE/PPH www.forresters.co.uk

Other ways to speed prosecution Waiving communications Claim amendments and excess claims fees (161/162) Waiving right to communication will gain 6 months Second notice of allowance If making amendments in response to notice of allowance, waive right to further notice of allowance. Gains 5-6 months. File direct European applications Automatically on faster track www.forresters.co.uk

Slowing down prosecution www.forresters.co.uk

Slowing down prosecution Many official mechanisms to speed up prosecution No formal ‘decelerated examination’ But prosecution can be slowed down by: Requesting extensions Using further processing Delaying paying renewal fee Delaying amendment of description Oral proceedings Filing a divisional application (expensive) www.forresters.co.uk

Slowing down prosecution ‘Engineering‘ your grant date After grant, renewal fees become payable nationally At allowance stage, compare national renewals fees to corresponding EPO fee If national renewals cheaper – speed up grant If EPO renewal cheaper – slow down grant. www.forresters.co.uk

Conclusion www.forresters.co.uk

Conclusion Lots of ways to speed up or slow down prosecution Inform your European patent attorney of your desired ‘speed’ as early as possible www.forresters.co.uk

www.forresters.co.uk @ForrestersIP Thank you www.forresters.co.uk aharding@forresters.co.uk www.forresters.co.uk @ForrestersIP