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Extending PPH opportunities for European application holders

02 October 2014 - No comments »

EPO President Benoît BattistelliTaking into account the diverse needs of applicants regarding their way through the patent examination process, the EPO has always been responsive and has adapted its procedures while maintaining the high quality of the delivered products. It is true that depending on the cycle of development of a new technology, applicants may have more or less interest in the speed of our processes. It is a real challenge for patent offices to find the balance with the interests of third parties. The European Patent Convention already provides some safeguards like the publication of all applications 18 months after the filing date.

For those needing an accelerated process, the EPO has offered the PACE service for many years. This scheme is open to all applicants for European patents, without any specific condition. At international level, the EPO has always considered the PCT as the most efficient platform, through which a single application can potentially cover 148 countries. The EPO will continue to support the improvements of its own PCT services as well as those of the ISAs community as a whole.

Over the last 7 years another scheme using the Paris route has developed: the Patent Prosecution Highway. It allows the examination of a patent application to be accelerated by a second filing office under the condition that the applicant can provide the work realized by a first filing office. Initially conceived for national products, it has been expanded to PCT products – an evolution much favoured by the EPO. With the signing of the IP5 PPH pilot program in September 2013, 85% of the world’s annual patent applications are potentially in its scope.

However, as the acceleration of the patent process under PPH depends upon a prior agreement between two patent offices, it could lead to a discriminatory treatment of European patent application holders who were not able to request accelerated treatment in front of a second filing patent office if the EPO had not signed such a PPH with the latter. To avoid such a situation, the EPO has decided to complete its PPH IP5 participation by adding some bilateral PPH agreements with patent offices from countries whose markets represent a specific interest for European industry but more largely to any European patent applicant.

This is why I was particularly pleased to sign three bilateral PPH agreements with the patent offices of Canada, Mexico and Singapore last week in Geneva. We are in discussion with a few others and open to suggestions from our users. Moreover, the EPO has launched its project called Early Certainty for Search (ECfS) last July, committing to deliver search reports with a written opinion on patentability within 6 months from the filing date or receipt for all patent applications.

The combination of ECfS with PPH will give holders of European patent applications a strong basis for obtaining accelerated examination from patent offices of major markets.

Benoît Battistelli

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