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

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

3. PPH - Patent Prosecution Highway
PPH - Patent Prosecution Highway

4. 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

5. 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

6. 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

7. 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

8. 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

9. PACE – Accelerated examination
PACE – Accelerated examination

10. 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

11. 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

12. Other ways to speed prosecution

13. 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

14. 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

15. Slowing down prosecution

16. 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)

17. 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.

18. Conclusion

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

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