The European Patent Office (EPO) has commenced a Patent Prosecution Highway (PPH) three year pilot programme with the Malaysian and Philippines patent offices, starting 1 July 2017.
Applicants whose claims have been found allowable by the EPO, the Malaysian or Philippines patent offices can now request accelerated processing of their corresponding application at the other office. This development follows hot on the heels of the patent offices of New Zealand and Colombia joining the PPH framework.
The PPH framework promotes work sharing and accelerated processing where patent examiners can make use of work carried out by other offices. The framework allows leveraging of an eligible application whose claims have been determined to be patentable in the Office of First Filing (OFF) to go through an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon an applicant’s request. The intention is to secure more uniform patent rights, improve quality and reduce the search and examination burden on the participating offices.
The PPH framework has gained real traction in recent times and is now an attractive option, particularly where accelerated examination and grant is desirable.
A number of different PPH agreements are available within the framework, including the ‘regular PPH’ which is typically a bilateral or multilateral agreement between two or more individual national or regional patent offices (currently forty six in total). The ‘PCT-PPH’ agreement allows for fast tracking in a participating patent office when the International Search Authority (ISA) and/or International Preliminary Examination Authority (IPEA) issues a positive opinion during the PCT international phase, or the ‘Global PPH’ (GPPH) which is a work sharing co-operation between 24 patent offices which seeks to simplify the original PPH procedure.
The EPO alone now has PPH pilot programmes with patent offices in Australia, Canada, China, Israel, Japan, Korea, Mexico, Malaysia, Philippines, Russia, Singapore and the United States, as well as taking part in the so called ‘IP5 PPH’ which is a program between the five largest intellectual property offices in the world. This includes the EPO, Japan Patent Office, Korean Intellectual Property Office, and United States Patent and Trademark Office.