• PPH Before the EPO. Highway to Heaven or Hiding to Nowhere?

    We have mentioned that the EPO has launched its “Patent Prosecution Highway” pilot program in conjunction with the US Patent and Trademark Office (USPTO). The President of the EPO says the two offices are “washing each other’s dirty laundry”. This sounds like an unnecessary duplication of work, but might it mean that neither office is satisfied with the quality of the laundry coming out of the other office? In other words, are we entering a brave new world in which the EPO will “rubber stamp” the US claims for grant in Europe, or would the EPO be content to see the pilot fail so as to justify separate examination in the different offices?

    Limited Eligibility

    So far, the EPO pilot is not open to ex-PCT applications that have entered the European regional phase. This significantly cuts down the corpus of applications that are eligible. We anticipate it will be extended in the near future, just as other bilateral PPHs between other offices have been extended.

    A narrow window

    For a given application, the window of opportunity to enter PPH may be quite narrow. The application must not be so recent that the US prosecution has not reached a successful conclusion nor so old that examination in the EPO has begun. Our recommendation to clients is that when they receive a Notice of Allowance from the USPTO, they should check the status of prosecution of the EP patent application (this can be checked online, or we can check this). If examination has not yet commenced in the EPO, the window is open and PPH should be considered as an option. The window closes when the EPO examiner issues an examination report.

    No Rubber Stamp

    Do not be surprised if the outcome of the pilot program is somewhere between the extremes of “rubber stamping” the US grant and complete failure of the pilot. We expect the EPO to conclude that the granted US claims are a better starting point for examination than the originally pending claims, so that part of the examination process can be leap-frogged, but that a granted US patent is not an indicator of likelihood of success before the EPO.

    Is it worth it?

    One might say “gee whizz”. All those preconditions just to get accelerated examination, which one can request anyway under the EPOs PACE program, and for which there is no fee.

    The PACE program is not heavily utilized. It is there to permit users to jump the queue, but many users are content to let examination proceed at a leisurely pace. There are a number of reasons for not hurrying. For example:

    • The applicant can delay the cost of grant (although this is much less expensive now that the London Agreement reduces the translation requirement in many of the more important states).
    • The applicant can delay prosecution pending resolution of objections in other offices. But as soon as the US examiner has identified allowable claims that are satisfactory to the applicant, that is a good time to request PACE, as contemplated by the PPH, which additionally proposes proceeding direct to the allowable US claims as the starting point for EP examination.
    • More leisurely prosecution gives the applicant more time to:
      • find and fully understand the prior art;
      • bring product to market (and evaluate whether the patent claims re useful in protecting the final product); and
      • monitor competitor activity and ensure if possible that the patent claims cover it.

    Is there a downside?

    We will mention two possible downsides.

    1. Perhaps broader claims are available in Europe

    Objections raised by the US examiner that have caused the applicant to amend before the USPTO may not be applicable in the EPO. One example is objections based on prior art under 35 USC 102(e) which is not prior art under the EPC. Another example is an obviousness objections based on combinations of US patent references. The law that governs permissible combining of references is different in the two offices.

    2. File history

    If the EPO examiner comments negatively on the granted US claims, might this damage the credibility of the US patent? The EPO file history is readily available online, and licensees, potential licensees and litigants may be emboldend to flaunt the claims of the US patent if the European examiner rejects them. Applicants may prefer to deal with objections from the EPO examiner from the starting point of the claims of the application. If the US granted claims are the starting point, then any further comment or amendment is in addition to what is available through the USPTO file history.

    How PPH Works At The EPO

    To take advantage of PPH, all the claims in the EP application must “sufficiently correspond or be amended to sufficiently correspond” to the patentable/allowable claims in the USPTO application(s). Claims will be considered to “sufficiently correspond” where, accounting for differences due to claim format requirements, the claims are of the same or similar scope.

    A claims correspondence table must be filed indicating how all the claims in the EP application correspond to the allowable claims in the USPTO application(s).

    The applicant must submit:

    (i) a copy of all the Office actions (which are relevant to patentability) for each of the USPTO application(s) containing the allowable claims that are the basis for the request; and (ii) copies of all the documents cited in the USPTO Office action (and translations in one of the EPO official languages) except for EP patents or published EP patent applications. Where the request for participation in the PPH pilot programme is granted, the EP application will be advanced out of turn for examination and will be processed in an accelerated manner under PACE.