Racing towards a faster patent


The IP5 Patent Prosecution Highway (PPH)

The European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO) are referred to as the IP5 Offices.

The IP5 PPH pilot programme commenced on 6th January 2014 and will continue for a period of three years ending on 5th January 2017. This programme enables a patent applicant to have a European patent application processed in an accelerated manner while at the same time allowing the EPO to exploit the work conducted by another IP5 Office, provided that the claims of the corresponding US, Japanese, Chinese, Korean or PCT patent application have been determined to be patentable/allowable by that IP5 Office.  Similarly, a US, Japanese, Chinese, Korean or PCT patent application will be processed in an accelerated manner by the JPO, KIPO, SIPO or the USPTO, respectively, if the EPO has determined the claims of the corresponding European patent application to be novel, inventive and industrially applicable.

There are a number of requirements to be fulfilled when requesting participation in the IP5 PPH pilot programme.  In particular, a request for participation in the PPH pilot programme must be filed, using the appropriate request form, along with a declaration of claims correspondence, a copy of the patentable/allowable claim(s), a copy of either all the Office Actions from the Office of Earlier Examination for corresponding application(s) containing the patentable/allowable claims that are the basis for the PPH request and copies of all the documents other than patent documents cited in the Office Action.  Where applicable, a translation of the Office Actions in one of the EPO official languages and/or of the patentable/allowable claim(s) must also be filed.

A request for participation in the PPH pilot programme must be filed before substantive examination of the European patent application has begun.

Alternative accelerated processing – PACE

There is another way to speed up the proceedings at the EPO, i.e. the programme for accelerated prosecution of European patent applications (PACE).

In contrast to the PPH detailed above, PACE may be requested in writing at any time.  This is, however, preferably done when filing the European patent application and requesting examination, or after receipt of the extended search report and together with the response to the search opinion.

If PACE is requested, the EPO makes every effort to issue the first examination communication within three months of receipt by the Examining Division of the application, the applicant’s response to the search opinion or the request for accelerated examination (whichever is later).  If requested on entry into the European phase, PACE covers formalities examination, the supplementary European search report and/or substantive examination, as applicable.

Please contact info@maclachan.ie for further information.

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